Newsletter
UBC Collaboration Produces New Cancer
Therapies
A collaborative effort between UBC scientists has not only revived interest
in a new potential Cancer therapeutic to control cell proliferation,
but also an assay for identifying such anti-mitotic compounds.
Dr. Raymond Andersen of UBC's Earth and Ocean Sciences Dept. has spent
most of his career investigating compounds derived from marine animals
for medicinal use. His curiosity was tweaked by reports of a substance
in rare western Australian corals called Eleutherobin, which operates
against cancers by the same mechanism as Taxol.
"Eleutherobin is a very complex molecule, so even though people had
synthesized it, they were never able to make it in sufficient quantities
to allow for in-vivo experimentation." Says Dr. Andersen. " The University
of California had the original patent on the substance which was licensed
to Bristol Myers, but they returned the license to the university because
of difficulties in collecting useful amounts of Eleutherobin for testing."
Enter Dr. Michel Roberge of UBC's Biochemistry and Molecular Biology
Dept., whose research group developed a special assay for this family
of compounds, which are similar to Taxol and equally complex. "Michel
invented a new cell-based assay for screening anti-mitotic agents" Says
Andersen, "And in collaboration with him we screened a number of marine
organisms. We found that a very common Caribbean soft coral was an excellent
source for Eleutherobin. "
"The technology we have just licensed relates to the use of this Carribean
soft coral as a source of Eleutherobin." Says Andersen. "What we did
was find a source to make the development of this compound viable."
UBC's Technology Transfer Manager John Proffett patented the anti-mitotic
assay and the method of purifying Eleutherobin from the coral, and very
recently licensed the latter technology to Molecular Geriatrics, an
Albert Einstein College of Medicine spin off company located in Michigan.
Molecular Geriatrics will seek to put the substance into clinical trials
within a partnership.
Meanwhile back at their UBC labs, Roberge and Andersen continue to
develop new synthetic Eleutherobin analogs for testing as anti-cancer
agents. "Because we have lots of the compound available we are the first
ones who have been able to do structural modifications on it and come
up with other analogs," Says Andersen.
They also use their assay system to identify new anti-mitotic agents
in nature as candidate anti-tumor therapeutics. Curiously the antibody
for the assay was originally used as a marker for Alzheimers' disease,
developed from Dr. Peter Davies work at the Albert Einstein College
in New York.
Drs. Andersen, Roberge, and UBC have been in the forefront of ethical
patenting and revenue sharing, and have dedicated a portion of royalties
to the Commonwealth of Dominica where the coral is collected.
Galian Photonics Latest UBC Spin-Off
Company
A founding team of scientists from UBC and local businessmen have launched
a new company, Galian Photonics Inc. (previously BandGap), to make waves
in the burgeoning new industry of optical systems for telecommunications
applications.
Two of the founders, Dr. Mike Jackson (Electrical and Computer Engineering)
and Dr. Jeff Young (Physics and Astronomy) have collaborated on inventions
in the area of planar photonic crystals. The inventions have been patented
and licensed through the UBC Industry Liaison Office, which now holds
an equity position in the company.
"Our technology is for optical integrated circuits. We place optical
building blocks in to things that look like integrated circuits and
hook them up in optical telecom systems," says Jackson.
The management team consists of CEO, Richard McMahon, who founded UBC
spinoff Techware, now Brooks Automation in 1983, Dr. Mike Jackson (R&D),
John Maycock (Business Development), who founded Photon Systems, now
Scientific Atlanta and Sheila Moynihan (HR).
Multimillion dollar financing has been arranged through Ventures West,
the Working Opportunity Fund, and a group of angel investors in Ottawa
that specialize in photonics.
Since receiving their first round of funding in December, the company
has grown to 15 people. They are looking for people with a background
in Physics or Engineering Physics and an interest in being part of a
leading-edge photonics company. For more information go to www.GalianPhotonics.com.
Stomping on the Pirates
What are the chances that your popular product is being counterfeited
by pirates overseas and shipped through Canadian ports? "Pretty good,
since Canada customs has not had the confiscation of counterfeit goods
as a priority, given they are basically a tax collection agency," says
Jerome Malysh of Kroll Global Protection Group. "Canada Customs has
no general enforcement procedures requiring them to look for counterfeit
goods. In order for them to take action you must have all the information
necessary to point them to the right container and tell them that’s
where the goods are."
"To get counterfeit goods seized, action must be taken through the
RCMP, which has a dedicated unit looking after all copyright, trademark
and other intellectual property violations," says Malysh. "Our company
does the background work and when we have the case together we go to
the RCMP to carry out the enforcement. It takes a lot of intelligence
effort, figuring out how to get involved in the distribution channel
for illegal goods manufactured offshore and then pinpointing the actual
shipment."
Unfortunately, the RCMP unit headed by Officer Paul McGowan at the
Vancouver Airport cannot spare the time to go on investigative fishing
expeditions. "If you do the preparation, obtaining all relevant documentation
such as copyright registrations and statements of complaint and present
it to us as a package, then we can take action." says McGowan. "If it
is a copyright case we need the creator or copyright holder to initiate
enforcement. The copyright holder is entitled to protection and we are
mandated to provide it."
McGowan says the enforcement situation is slowly changing for the better.
In November of 2000 Canada Customs made a policy change which allowed
their staff to assist the RCMP in copyright enforcement actions. But
there are signs the counterfeiters of software are moving to Canada.
Says McGowan, "There are indications that the enforcement pressures
in South East Asia are causing illegal copying operations to shift here."
Illegal knock-offs have a tougher time entering the US, since the American
customs service has better regulations, enforcement tools and officers
trained to take the initiative and target counterfeit products.
The problem is complicated since criminals can ship generic goods into
North America legally, and send the counterfeit labels through a different
route. A pirate dealer slaps on the labels in his warehouse and is in
business the next day flogging fake products on E-Bay or other auction
sites. Cyberspace offers a marvelous channel to market illegal goods.
Rather than try to plug the ports of entry for counterfeit goods, a
better strategy may be to go after the factories that make them. Depending
on the jurisdiction, it may be possible to work with local authorities
to enforce Intellectual Property rights in South East Asian countries
to stop the traffic by shutting down illegal operations.
In rogue countries such as Cambodia, Myanmar or Indonesia, it may be
very difficult to involve authorities in obtaining justice. Enforcement
experts in the field have identified the countries specializing in particular
forms of piracy and know the major players who often finance operations
from havens such as Taiwan or Singapore. Currently Maylasia dominates
illegal DVD and CD-ROM copying.
How to get at counterfeiters hiding in renegade countries? For fun
set up a sting operation, and hire an agent to order a huge shipment
of your counterfeited product to be shipped through a port in a jurisdiction
that does have legal teeth, such as Hong Kong. Then have port customs
officials seize the shipment, and default on payment. You now have a
free supply your own product, which you can sell if it meets your quality
standards, and the counterfeiter goes bankrupt.
In the past China has been the source of many pirate manufacturing
operations, but conditions are slowly improving as China takes steps
to qualify for entry into the WTO.
The problem in China is that there is enormous unemployment, a corrupt
bureaucracy and little control over what goes on in factories, especially
in remote areas. The economy of whole towns can be completely based
on manufacture of knock-off products.
Microsoft claims that 90% of their product sold in China is counterfeit,
but to be fair, it should be said that 80% of the counterfeiting activity
there is against Chinese domestic brands, indicating the large scale
of pirating going on.
As in Canada, it is necessary in China to conduct one's own investigation
to identify sources of counterfeiting. Kroll Global Product Protection
Group works with Chinese law enforcement to obtain court orders and
with local police, conducts raids in factories to seize counterfeit
goods from razor blades to computers. Alex Duperouzel of Kroll tells
of an instance where his crew raided a government-owned factory with
such an order and seized hundreds of motorcycles sporting a well-known
western brand name. He notes that Hong Kong has responded to American
concerns over counterfeiting, and is now levying stiff penalties against
software pirates.
Should you care if your product is being knocked off in Asia, Africa
or Eastern Europe? Some companies such as Proctor & Gamble have
given up on policing such places as the new Russian republics, where
all the P&G products in circulation are knock-offs and the costs
of enforcement would be prohibitive.
If you make clothing or hardware, enforcement may not be worth the
trouble. However, if you are a producer of pharmaceuticals, foods and
beverages, and your good name is destroyed when people are poisoned,
then you must enforce your rights in order to protect your brand in
all markets.
US Madrid Protocol Ratification Augurs Canadian
Trade-Mark Changes
The Madrid Agreement began as a great idea for filing international
trademarks to protect goods and services worldwide with one application
- an obvious time and money saving procedure. If Canada signed the agreement
a single application and set of fees filed in English could cover 67
Madrid Union countries without engagement of local agents. It has been
used in Europe since 1892, and recently the Bush administration in the
US has indicated it supports Madrid. Such august groups as the International
Trademark Association have lobbied long and hard for it.
It would appear that ratification of the Protocol Relating to the Madrid
Agreement Concerning the International Registration of Marks will happen
this year in the US. The Canadian Intellectual Property Office is informally
studying the Protocol, since Canadian trade-mark practice will be affected
and they will be under pressure to join if the US does.
Jane Baggott in her excellent paper on the subject reviews the Madrid
procedures and the advantages to joining, which on the surface are very
attractive. However, the underlying problems with Madrid stem from the
requirements in Canada and the USA for specific identification of goods
and services and for use of the mark before registration.
A Canadian or US applicant must state that the mark is in use before
it is registered for very specific wares or services. In comparison,
the other countries in the Madrid system allow for registration of a
mark for whole classes of goods and services with no examination procedure
or use requirements. The US and almost all countries follow the international
Nice Classification of goods and services for trade-marks.
One of the basic changes faced by CIPO to move towards the Madrid system
would be adoption of the Nice Classification for trade-marked wares
and services. Currently an applicant for a Canadian mark must provide
an "laundry list" of particular goods or services to be covered by the
mark. As Jane Baggott explains:
"We don't have classification of goods/services. If we were to adhere
to Madrid, and were we to adopt the Nice Classification system, it would
mean increased costs to Canadians who register marks which fall into
more than one class. Filing fees will be per class (as everywhere else
in the world practically) instead of the current single filing fee for
all goods/services in an application. And that would affect all Canadian
owners whether or not they were interested in filing abroad. "
"But even more serious for the Canadian trade-mark owner is that under
the current law, without classification, wares and services are very
specifically defined to allow examiners and owners to distinguish between
similar marks. If Madrid were adopted in Canada, applicants filing first
in another country may stipulate that their products are defined as
e.g. "radios, and all goods in class 9 (Electrical and Scientific Apparatus)
". This is very broad. When their application hits Canada, and becomes
registered (provided it successfully passes the scrutiny of the Examiner)
Canadians are at a disadvantage. Up until Madrid was adopted the Canadian
who sold radios could only claim registration for the specific products
on which the trade-mark was used, i.e. radios, and not on a broader
scope of products. This is probably an extreme and poor example, but
serves to illustrate that even if we do adopt the classification system,
current holders of trademarks in Canada are at a disadvantage. This
is one example of a downside."
"An upside is that Canadians will be able to file a single application
in Canada and then experience considerable savings when filing abroad.
However, a downside of this could also exist if the Canadian Office
does not introduce the classification system, because the Canadian owner
will be limited in scope in his Canadian application, which limitation
will be extended to all of its other filings under the Protocol. As
you can see, this is just one of the analyses one must conduct when
considering whether to join Madrid or to not join is preferable."
"Another serious disadvantage for Canadians would be the backlog in
examination of Canadian home applications. This is a certainty particularly
given the current delays experienced for home applications, and the
time restrictions (18 months from filing) by which a local Trade-marks
Office must examine a mark filed under the Madrid system. Canadian applications
will be delayed in favour of meeting the Madrid time restrictions."
"Also, we have to look at harmonisation of laws on a global scale.
And if the USA joins, are we bound to do so too? Would it be a mistake
not to? How would the trade-mark owners in Canada be affected?"
"There are many such issues to be considered in the overall scheme.
Hence the reason for not showing specific support either for or against
the system. First to file is indeed another big change for Canadians,
and would require some intense changes at legislative levels. Can be
done, but will take time. The end decision may not be Canada's. The
best we can do is prepare for it," says Ms. Baggott.
US legislators have made a number of important changes to their trademark
law so Americans can take advantage of the international system. In
the past decade they have taken steps to harmonize practices with international
procedures and pave the way for ratification of the Madrid Protocol.
For example, it may be possible for a US applicant to delay making a
Statement of Use for the International Registration in order to broaden
the scope of goods and services outside the US.
Trade-mark officials in Canada seem to have adopted a wait and see
attitude. Lisa Power, Assistant Director of the Canadian Trade-Mark
Office, says her officials are looking at the issues around the Madrid
Protocol and she will be attending upcoming WIPO meetings concerning
Madrid. She acknowledges there is strong feeling in the USA that the
Madrid Protocol would be beneficial for American businesses that operate
internationally, but does not feel there is the same consensus in Canada.
" Some people think Madrid is wonderful, but there is no unanimous
agreement -
The (Intellectual Property) profession has problems with Canada joining
- they have some legitimate concerns," she said. "I think Madrid could
be implemented in a way that meets the needs of Canadians. I think we
would be need to consult with Canadian business and with the (IP) profession
to make sure that when we change the Trade-Marks act we change it in
a way that benefits Canada."
Ms. Power notes that the trade-mark business is booming, and her office
has just hired thirty more examiners to get the backlog of applications
under control. "In the past five years we have seen an unbelievable
growth in trade-mark registrations, " she said. "For the most recent
fiscal year we processed 46,000 cases. Currently the trade-mark business
is about 50/50 between foreign and domestic filings."
Obviously Canada has a long way to go in preparing for changes that
will probably be forced upon us by international trade agreements such
as the WTO.
Bibliog:
"Madrid Bound: the U.S. Approaches Ratification of the Madrid Protocol,"
Intellectual Property Today, December 2000 [Part I], January 2001 [Part
II]. John L. Welch
Foley, Hoag & Elliot LLP, www.fhe.com/news
"Canada and the Madrid Proposal" by Jane Baggott, www.gowlings.com/search/pub.htm
Biz Methods Patents Under Attack
The US Patent and Trademark Office is facing changes in how it handles
"Business Method" patents as US legislators face a barrage of criticism
over invalid patents issuing due to poor patent examination. One solution
being bandied about is the creation of patent opposition procedures,
allowing interested parties to challenge questionable patents without
litigation.
Says John Knox of Smart & Biggar, Fetherstonhaugh & Co "Examining
staff can't keep up with the large and growing volume of patent applications
in this area. An opposition procedure would allow interested parties
to present art the patent office may not have found in its limited search
time. The thinking is that patents of no immediate interest would probably
not be opposed and would be granted with no additional bother to the
applicant. Patents of immediate interest however, would have to be defended
in an opposition proceeding, which would supposedly ensure truly patentable
subject matter is patented and this would possibly avoid the commotion
over things like the Amazon "one click" patent. "
Knox notes that Europe and Japan have opposition procedures. Canadian
practice allows a person to submit prior art to an examiner after the
application has been published, 18 months after filing.
Complaints to US elected officials have produced two bills to inject
quality control into the USPTO system, currently stalled in Judiciary
Committee sub-committee. They are H.R. 1332, the "Business Method
Patent Improvement Act of 2001" and also H.R. 1333 "Patent
Improvement Act of 2001" The intent of these bills is to make
business method patents difficult to obtain and easier to challenge.
The proposed new mechanism to fix the system would be an "Administrative
Opposition Panel" of 18 patent judges to hear cases in patent reexaminaton,
open to third party requestors.
The Business Method Patent Improvement Act of 2001 [H.R. 1332] requires
the PTO to publish all business method patent applications after 18
months. In conjunction with the publication provision, it creates
opportunities for the public to present prior art or public use information
before a business method patent issues. It establishes an administrative
"Opposition" process where parties can challenge a granted
business method patent in an expeditious, less costly alternative
to litigation. The bill lowers the burden of proof for challenging
business method patents, requires an applicant to disclose its prior
art search, and finally, creates a rebuttable presumption that a business
method invention constituting a non-novel computer implementation
of a pre-existing invention is obvious, and thus, not patentable.
The Patent Improvement Act of 2001 [H.R. 1333] would establish an
administrative "Opposition" process where parties can challenge
any granted patent in an expeditious, less costly alternative to litigation.
The bill creates a rebuttable presumption that any invention constituting
a non-novel computer implementation of a existing invention is obvious,
and thus, not patentable. Finally, the bill requires an applicant
to disclose its prior art search.
The Senate hearings are intended to:
- Review whether the Patent and Trademark Office has adopted the appropriate
steps to improve the quality of the examinations of business method
patents.
- Determine whether the PTO has adequate resources, qualified personnel,
and appropriate databases available within the agency.
- Examine what steps, if any, Congress should consider implementing
to improve patent quality for inventors and the public.
To date the testimony has focussed on the issue of examination quality,
examiner training and database quality.
The Bill is being opposed by the patent office, the American Intellectual
Property Law Association, the Intellectual Property Owners Association,
as well as by the chairman of the House subcommittee on courts, the
Internet and intellectual property. The Intellectual Property Owners
Assoc., including members such as AT&T, Microsoft and Sun, are lobbying
for more funding for the USPTO which is unlikely under the Bush administration
even though the USPTO's profits go into general revenue.
The patent office maintains that its new and improved business method
examination procedure is working The office now employs 77 patent examiners
for business method applications, up from 17 in late 1997. Applications
recommended for approval by one examiner are reviewed again by a second
examiner.
What is a business method patent? Glad you asked. Here is the very
broad definition in the current Bill relating to "business method"
and "business method invention."
Section 100 of title 35, United States Code, is amended by adding
at the end the following:
`(f) The term `business method' means--
`(1) a method--
`(A) of--
`(i) processing data; or
`(ii) performing calculation operations; and
`(B) which is uniquely designed for or utilized in the
practice, administration, or management of an enterprise;
`(2) any technique used in athletics, instruction, or personal
skills; and
`(3) any computer-assisted implementation of a method described
in paragraph (1) or a technique described in paragraph (2).
`(g) The term `business method invention' means--
`(1) any invention which is a business method (including any
software or other apparatus); and
`(2) any invention which is comprised of any claim that is
a business method.'.
How bad are they?
At the USPTO the flood of business method patents has severely strained
resources and examination staff. Greg Aharonian on his site at www.bustpatents.com
has a huge archive of commentary on the subject plus documented cases
of dozens of bad US patents which should never have issued. Some cynical
industry experts say that about half US patents are invalid due to lax
and permissive examination.
How many are there?
Over six thousand issued US patents are classified in class 705 entitled
"Data processing: financial, business practice, management, or cost/price
determination." More are scattered in other classifications. The numbers
of patent filings for business methods is increasing exponentially,
from about 1,000 in 1998 to 7,800 in 2000.
What effect on litigation?
Paul J. Lerner, Sr. Vice President and General Council of General Patent
Corp calculates that in 1996 there were a little over 1,800 patent infringement
lawsuits filed, while in 1999 there were over 2,300
patent suits filed, an increase of approximately 34%. Says Lerner "…we
are now seeing an increasing number of business method patents issuing
from the patent office, and these are going to be a very
significant cause of litigation, simply because many of the business
methods
that are covered by these patents are probably being practiced by other
businesses."
For more background reading see the USPTO Patent Business Methods website
at http://www.uspto.gov/web/menu/pbmethod/
Canada's Canadian Intellectual Property Office bars such patents, but
some have oozed through the cracks. See PATSCAN news for Winter 2000
"No Business Methods Patents for Canucks!"
US Festo Decision Earthquake Felt in Canada
US patents just lost much of their scope of protection, and Canadians
filing patents internationally must now consider a range of options
in drafting claims.
A recent ruling in the US Patent Court (CAFC) regarding the case of
Festo V. Shoketsu has considerably reduced the breadth of patent claims
in litigation depending on the prosecution history of the patent through
examination.
Until recently in the USA, the Doctrine of Equivalents was liberally
applied to provide wider scope for patent claims than by their literal
interpretation. In theory, the doctrine was meant to give the patentee
protection against copycats making minor changes to an invention that
would be sufficient to take the copied subject matter outside the literal
scope of the patent claims. Equivalence is determined on an element-by-element
basis in any given claim.
After Festo, the doctrine of equivalents cannot be applied to any claims
that have been amended during prosecution. Prosecution history estoppel
(or "file wrapper" estoppel) is now rigorously applied to completely
bar infringement by equivalence for any claim containing an element
that was amended during prosecution for reasons related to patentability.
Previously, it had been US court practice to apply prosecution history
estoppel flexibly, limiting extension of equivalence to a given amendment.
As an example, imagine if you will, two scientists who both independently
invent the same thing and file patent claims in similar ways. Sheila
adopts an aggressive strategy. She files broad claims, which are rejected,
and haggles with the patent examiner over wording for narrower claims
in light of prior art. Ellen is more conservative and files modest claims
on the same invention, which are accepted as filed.
When they go to court to defend their patents, Ellen wins big because
she gets Doctrine of Equivalents (DOE) coverage for broader interpretation
of her claims. Sheila loses her DOE coverage because of Festo and is
left with literally interpreted claims.
Patent experts have come up with a checklist of methods for circumventing
Festo. The first rule is to file several independent claims of varying
scope, rather than one independent claim and other dependant claims.
The objective is to not ever amend claims, only delete ones that the
examiner attacks. Another tack is to employ means-plus-function claims,
which have special status regarding the Doctrine of Equivalents. Yet
another ploy may be to file a continuation with the unallowed claims
to separate the issues from the allowed claims.
What will be the effect of Canadians filing international patents?
Blake Wiggs of intellectual property law firm Oyen, Wiggs, Green, Mutala
comments on significant differences between Canadian and US patent practice:
"Canadian practice will most definitely change--the vast majority of
patent applications filed by Canadians are initially filed in the USPTO.
Canadian practitioners who draft and/or prosecute such patent applications
must necessarily take Festo and other relevant US jurisprudence
into account. Subsequently filed Canadian patent applications which
correspond to such US applications will therefore necessarily have been
prepared with a view to Festo, etc. In the absence of significant
improvement(s) to the invention itself, it is relatively rare for such
subsequently filed corresponding applications to undergo wholesale substantive
revision prior to filing in Canada or elsewhere. Cautious Canadian practitioners
may at some point consider 'Canadianizing' such applications prior to
filing in the CIPO, for example by adding broader claims in an effort
to secure broader Canadian patent protection, on the theory that such
added claims could later be amended without running afoul of a made-in-Canada
Festo-type doctrine. Note that Festo depends heavily
on application of the US file wrapper estoppel doctrine. Canadian courts
have consistently refused to recognize any doctrine of file wrapper
(or 'prosecution history') estoppel in assessing the validity of a Canadian
patent: "...As for file wrapper estoppel, counsel for the respondent
failed to point this Court to a single Canadian decision in which this
type of estoppel has been applied and not merely alluded to. Nor did
counsel offer up any reasons why the Court should sow this foreign seed
in its yard..." per Muldoon, J. in Merck Frosst Canada Inc. et al
v. Minister of Health et al (2000) 8 C.P.R. (4th) 87 at [24].
Tom Bailey, a colleague of Blake at Oyen, Wiggs, Green, Mutala adds:
"The doctrine of prosecution history estoppel for the purpose of construing
claim scope was rejected by the Supreme Court of Canada recently (Free
World Trust v. Electro Sante Inc., December 15, 2000). Mr. Justice Binnie
noted that the use of this estoppel has been rejected by the courts
in Canada. He concluded as follows:
"In my view , those references to the inventor's intention refer to
an objective manifestation of that intent in the patent claims, as interpreted
by the person skilled in the art, and do not contemplate extrinsic evidence
such as statements or admissions made in the course of patent prosecution.
To allow such extrinsic evidence for the purpose of defining the monopoly
would undermine the public notice function of patent claims, and increase
uncertainty as well as fuelling the already overheated engines of patent
litigation. The current emphasis on purposive construction, which keeps
the focus on the language of the claims, seems also to be inconsistent
with opening the pandora's box of file wrapper estoppel".
Of course, Canadian courts sometimes follow U.S. precedents and Canadian
practice could change in the future. For example, the U.S. Feist case
relating to copyright law has been followed in Canada. Accordingly the
issue could be revisited in Canada after the Festo appeal has been decided
by the United States Supreme Court.
Dean Palmer, a local Vancouver patent agent and IP lawyer, raises other
issues for Canadians dealing with the Festo decision, including the
claim structure required for European patent applications directed to
the concept of "unity of invention" which differs somewhat from US practice.
"Festo has raised some interesting questions. The short answer to your
question is that yes, it already has had an impact, but in an indirect
manner. Most of my clients file both Canadian and US applications, or
they may be conducting an infringement analysis for their technology.
Festo states that if amendments in the USPTO relate to patentability,
an absolute bar will result regarding the Doctrine of Equivalents. This
requires us in Canada to carefully review the prosecution history of
a US application to determine the scope of the claims. Hence the impact
on infringement analyses. For the US filings we do, we are now drafting
multiple independent claims to avoid having to limit fewer independent
or dependent claims with narrowing amendments. As a side note, this
will create a conflict for PCT applications, where unity of invention
often becomes an issue with a plurality of independent claims."
Herb Regehr, IP lawyer and patent agent with Bull, Housser & Tupper
states:
"The (Festo) decision is of no effect on a Canadian patent and the
law in Canada is that the prosecution history is not considered by the
courts in interpreting the scope of claim protection. As a consequence
one might want to start off in Canada with broader claims than in the
U.S. as this could result in a broader Canadian patent, without the
risk of an estoppel.
In Canada, we have a similar concept also called the doctrine of equivalents
or the doctrine of "substantive infringement" where infringement can
be found even if the alleged infringing device doesn't literally infringe
a claim if the essential features of the invention are taken by the
infringer. "
Product counterfeiters and knock off artists will now have a prescription
to work around US patents. All they must to do to avoid infringement
is to review the prosecution history of the patent and determine which
elements have been amended during the prosecution, then substitute other
elements or their equivalents for the amended elements.
Sidebars:
File Wrapper Estopel explained:
estoppel (es-top'el) -- A person's own act, or acceptance of facts,
which preclude his later making claims to the contrary.
A "file wrapper" or prosecution history is the collected documentation
and correspondence concerning the filing and issue of a patent. Commonly
a patent agent or attorney will draft broad claims that are rejected
by a patent examiner in view of prior art patents. The agent then submits
amended, narrower claims that are accepted. In File Wrapper Estopel
a patent owner is prevented in litigation from demanding claim coverage
which he volunteered to give up in the examination process.
The Doctrine of Equivalents explained:
The Doctrine of Equivalents has been used by patent holders to expand
patent claims beyond their literal meanings. A patent claim is said
to be infringed by a device if there is discovered a correspondence
between the elements of the claim and the elements of the accused device
or process. If the same number of elements is present in the accused
item then infringement has occurred. If there are fewer elements, there
is no infringement.
The Doctrine of Equivalents says that if in the combination the accused
device:
- performs the same function
- in substantially the same way
- to produce substantially the same result
then infringement has occurred.
For instance:
ToyCo owns a patent claiming a jack in the box functioning
with a coiled spring. ToyTown sells a jack in the box operating
with a compressed foam rubber block. ToyZoo sells a similar
pop-up toy operating with an electromagnet.
The ToyTown compressed foam block jack in the box is said to
infringe the claims of the ToyCo patent since it satisfies the
three criteria. The ToyZoo electromagnetic actuator functions
in a different way, and so does not infringe.
Dependent and Independent claims explained:
A dependent claim includes all the limitations of the independent and
anyintervening claims. In other words, if the independent claim has
limitations A,
B, C, and D, and the dependent claim recites E, then the limitations
of the
dependent claim are A, B, C, D, and E
Bibiliog:
"Federal circuit narrows application of the doctrine of equivalents",
Brian M. Hoffman, Fenwick & West LLP.
Canada Signs Patent Law Treaty
The Honourable Brian Tobin, Minister of Industry announced on May 22,
2001, that Canada has signed a new Patent Law Treaty (PLT). In the presence
of Canadian Ambassador to the World Trade Organization, Sergio Marchi
and World Intellectual Property Organization (WIPO), Director Kamil
Idris, Canadian Intellectual Property Office (CIPO) representatives
Alan Trociuk and Scott Vasudev witnessed the signing.
The Patent Law Treaty is a WIPO accord. WIPO was established in 1970,
and is one of 14 specialized agencies in the United Nations system.
Based in Geneva, Switzerland, and composed of 171 member states, WIPO
promotes intellectual property (IP) protection, facilitates adoption
of IP treaties and assumes an important role in the administration of
IP throughout the world.
The Treaty and its regulations will simplify and harmonize administrative
practices among national and regional intellectual property offices
(IPOs).
More specifically, the key results of the Treaty include: a) simplification
of requirements for obtaining a filing date; b) harmonization of requirements
that can be requested by national offices, with respect to the form
and content of an application; c) possibility for owners and applicants
to perform certain administrative procedures without representation;
d) simplification of procedures for transfer of ownership; e) possibility
of extension of the priority period under specific conditions and; f)
availability of enhanced mechanisms to avoid a loss of rights.
Canada is already compliant with many aspects of the PLT. However,
some changes may be required to the Patent Act with respect to
filing date requirements, claiming date priority, assignment and representation.
International efforts toward patent law harmonization were initiated
in 1985. A first round of negotiations concluded in 1991 without an
agreement. In 1995, a new round of negotiations was initiated and the
PLT was adopted at WIPO’s Diplomatic Conference for the Conclusion of
the PLT on June 2, 2000. To date, 47 countries have signed the PLT,
including the United States and the United Kingdom.
By signing the Treaty, Canada is agreeing in principle with the Treaty
and its rules, committing to launch the ratification process and to
subsequently amend its national patent law so that Canada’s patent administrative
formalities conform with the Treaty.
Canada assumed a leadership role by actively participating in all preparatory
sessions and at the Diplomatic Conference. During the entire process,
Canada has advocated for more substantive patent law harmonization in
areas dealing with administrative issues.
Consultations took place with stakeholders over the five-year period.
Representatives from the patent agent community, the major private sector
stakeholder, have expressed satisfaction with the content of the Treaty
and with Canada’s signature.
By signing, Canada is following through on one aspect of its Speech
from the Throne commitment that "the Government will ensure that Canadian
laws and regulations remain among the most modern and progressive in
the world, including those for intellectual property."
For more information, please contact:
Pierre Trépanier
Director, Patent Branch
Canadian Intellectual Property Office
(819) 997-1947
or visit CIPO’s Web site to link to more in-depth information on the
Patent Law Treaty.
www.cipo.gc.ca
Newsbits
US Patent applications are now published on the USPTO website at www.uspto.gov
Curiously, the assignee (owner) information is missing. Finding the
missing corporate name usually involves going to patent database with
international coverage, such as Derwent or Inpadoc and searching by
inventor name to find counterpart published applications from other
countries.
Delphion has now gone commercial. The former IBM Patent Server is now
available by subscription only, except for basic US data.
The Association of University Technology Managers will be offering
the Canadian Basic
Licensing Course again in the Sept./Oct. time frame this year. The course
will be run in the
Toronto area. Caroline Bruce is the chair of the organizing committee.
Three former principals of the American Inventors Corp. will be doing
prison time. Trio plead guilty to swindling 34,000 inventors out of
tens of millions of dollars through fraudulent invention promotion and
marketing schemes. See more news on inventor fraud at http://www.inventors.ca/bc/
Bountyquest continues to successfully torpedo patents posted for targeting
with invalidating prior art. Many "business method" patents have been
shot down, including the famous "DoubleClick" Amazon.com patent. Latest
victory is for German student Holger Blasum, who won a $10,000 reward
for his submission of articles from the journal Nucleic Acids Research
that predate an Incyte patent (US 5,966,712). See www.bountyquest.com
Some good examples of "business methods" patents and applications that
should probably be posted on Bountyquest relating to patent and licensing
procedures: US 6175824 "Method and apparatus for choosing a stock portfolio,
based on patent indicators." WO9806047 "System for computing fees for
use of intellectual property" or US 6138119 "Techniques for defining,
using and manipulating rights management data structures."
PriorArt.org now established for posting of innovations in order to
defeat patents in your subject area. Popular with software developers
who want to forgo the patenting expenses. See www. PriorArt.org. --
The bridge between prior art and patent examiners.
Hot new perpetual motion/flying saucer innovations from China! "Floatage-gravity
perpetual motion machine" (CN1239187) and "Electric potential energy
generator and flying vehicle"(CN 1167214).
CUBA CALLS FOR THIRD WORLD CHALLENGE TO IP LAWS: Cuba urged Third World
countries to challenge international intellectual property regulations.
Cuba’s President, Fidel Castro, claims that the developed countries
are the only ones benefiting from these international regulations. Castro
also voiced his support for the governments of South Africa and Brazil,
who have indicated their intent to produce AIDS drugs that may infringe
US issued patents.
NEW DOMAIN NAME SUFFIXES COULD INCREASE IP DISPUTES: New.net is a company
that sells domain names with domain suffixes that are as yet unregistered
by ICANN. Commentators predict that the unauthorized domain names may
lead to increased disputes over intellectual property, particularly
if the domain names are identical to those operating in the .org, .com
and .net domains.
WALL-MART LOSES DISPUTE Canadian author Kenneth Harvey has won his
fight against Wall-Mart over his protest site. In an unprecedented move,
a WIPO arbitrator has refused to order Harvey to turn over the domain
name, wallmartcanadasucks.com, to Wal-Mart, stating that trade-mark
holders should not be allowed to use ICANN's system for resolving disputes
over Internet domain names to "shut down robust debate and criticism".
Although U.S. courts have affirmed the right to set up protest sites,
Harvey's victory marks the first time that a "sucks" domain name owner
has won a case under ICANN's dispute process. This decision has made
it clear that in certain circumstances free speech may be protected
by ICANN. (em) http://www.globetechnology.com/archive/gam/News/20001207/RDOMA.html
http://arbiter.wipo.int/domains/decisions/html/d2000-1104.html
The British firm Molins has filed a patent
for a talking cigarette pack that delivers a cancer warning every time
the
smoker opens the lid. See Patent Number GB2351061 disclosing a gadget
that plays an oral warning or a funeral march when you grab a smoke.
Peter Detkin, VP and Assistant General Counsel at Intel,
who oversees much of Intel's IP litigation says "I do see an increase
in the amount of patent litigation filed by noncompetitors", such as
people who acquire patent licenses in
bankruptcy court and then seek to enforce them. Intel has been a major
target of these lawsuits. In 1998, we had about $7 billion in claims
made against us by people who had
never made a semiconductor device in their lives."
PATSCAN NEWS - disclaimer
PATSCAN NEWS is published by the PATSCAN service of the University
of British Columbia Library to promote the technology transfer of academic
research in B.C.
Subscriptions $15/yr for 1st. class postal delivery. Free e-mail delivery
upon request.
Contact PATSCAN, Main Library,
University of B.C., 1956 Main Mall, Vancouver, B.C., V6T 1Z1. Phone
(604) 822-5404, Envoy "PATSCAN", or Fax (604) 822-9532.
Email: rsimmer@interchange.ubc.ca
Websites: www.patscan.ubc.ca
or www.library.ubc.ca/patscan or www.patscan.com
PATSCAN NEWS provides only brief summaries of developments in the world
of patents, and is not meant to be exhaustive on any subject. For legal
advice on questions discussed, consult a patent agent.
Funding for this publication and for PATSCAN is through the B.C. Ministry
of Advanced Education, Training and Technology. PATSCAN is a registered
trade mark of the University of B.C.
Copyright R.V. Simmer, 2001, U.B.C., Vancouver, Canada. Reproduction
of any or all of this publication prohibited without prior written permission.
All rights reserved.
Warning: No warranty is expressed
or implied that any statements in PATSCAN News are politically or even
grammatically correct.
Return to the PATSCAN Newsletter
and publications web page.