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WIPO launches online tool with low cost access to selected online scientific and technical journals for least developed countries (LDCs). It is a  public public-private partnership which aims to provide industrial property offices, universities and research institutes in least developed countries with free access and industrial property offices in certain developing countries. The tool was launched at WIPO’s headquarters on July 23, 2009.

According to a press release by the Organization, the Access to Research for Development and Innovation (aRDi) program was rolled out by WIPO in partnership with various prominent science and technology publishers including the American Institute of Physics, Elsevier, John Wiley & Sons, National Academy of Sciences, Oxford University Press, Royal Society of Chemistry , Food and Agriculture Organization (FAO) etc.

The aRDi program will support developing countries in realizing their creative potential and facilitate their integration into the global knowledge economy in line with the objectives of WIPO’s Development Agenda. The project was launched by WIPO Director General Francis Gurry at the High Level Forum on the Strategic Use of Intellectual Property for Prosperity and Development to explore practical approaches to IP policy implementation for wealth creation and development in these countries.

“The International Association of Scientific, Technical and Medical Publishers (STM), together with the International Publishers Association, is very happy to work with WIPO as it strives to promote its vision of development through local innovation,” said Ms. Jayne Marks, STM Chair and Sage Publications Vice President & Editorial Director.

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Biplab Dey

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Dolcera

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One of the latest decisions of the Indian Patent office to facilitate correspondences related to a patent application in electronic form to patent applicants for their ease. This step is a landmark achievement in the history of the Indian Patent Office and was a long felt need to the patent stakeholders.

The initiative was expected to begin on July 1. The Controller General of Patents, Designs and Trade Marks, P H Kurian, said that the plan would take off later this month after the completion of all formalities. The notification directs the applicants and patent agents to provide their email ids at the time of filing the patent application for dispersing communication notices and examination reports, electronically.

This move will alleviate the burden of both the Patent Office and the applicants and would help speed up the processing of patent applications. “Introduction of electronic correspondence is a boon for stakeholders as it will ease the task of patent prosecution in India, especially for applicants residing in foreign countries,” FICCI’s Director General Amit Mitra said.

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Biplab Dey

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Dolcera

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Prosecution history estoppel, also known as file-wrapper estoppel essentially means that when an inventor during prosecution narrows down his invention to escape prior art by some amendment, then he cannot claim that someone else infringed his patent under doctrine of equivalence (DOC). Amendment to the patent claims and argument by the patentee during the patent application process may limit the range of equivalents to which patentee is later entitled under the DOC.

The prosecution history estoppel is invoked to prevent the application of the doctrine of equivalents where claim scope has been surrendered either by express disclaimer or by narrowing amendment. The scope of application of prosecution history estoppel to this latter category has been the subject of much debate in the US patent bar.

One of the famous case that examined the relationship between doctrine of equivalents and the doctrine of prosecution history estoppel is Festo Corp. v. Shoketsu Kinzoku Kogyo Kabushiki Co.

Petitioner Festo Corporation owns two patents for an improved magnetic rodless cylinder, a piston-driven device that relies on magnets to move objects in a conveying system. The device has many industrial uses and has been employed in machinery as diverse as sewing equipment and the Thunder Mountain ride at Disney World.

Shoketsu Kinzoku Kogyo Kabushiki Co. entered the market with a device that used one two-way sealing ring and a nonmagnetizable sleeve. Festo Corporation already owned two similar patents (although their initial patent application was rejected) for this industrial device.

Festo filed infringement suite against Shoketsu under the DOC.

Petitioner’s patent applications, as often occurs, were amended during the prosecution proceedings. The application for the first patent (U.S. Patent No. 4,354,125), was amended after the patent examiner rejected the initial application because the exact method of operation was unclear and some claims were made in an impermissible way. The inventor submitted a new application designed to meet the examiner’s objections and also added certain references to prior art. The second patent (U.S. Patent No. 3,779,401), was also amended during a reexamination proceeding. The prior art references were added to this amended application as well.

Shoketsu claimed that prosecution history estoppel should bar Festo from asserting equivalents.

Court’s Decision

According to the United States District Court for the District of Massachusetts, Festo’s amendments were not made to avoid prior art, and therefore the amendments were not the kind that give rise to estoppel. A panel of the Court of Appeals for the Federal Circuit affirmed. 72 F.3d 857 (1995). We granted certiorari, vacated, and remanded in light of our intervening decision in Warner-Jenkinson v. Hilton Davis Chemical Co.After a decision by the original panel on remand, 172 F.3d 1361 (1999), the Court of Appeals ordered rehearing en banc to address questions that had divided its judges since decision in Warner-Jenkinson.

The en banc court reversed, holding that prosecution history estoppel barred Festo from asserting that the accused device infringed its patents under the doctrine of equivalents. 234 F.3d 558 (2000). The court held, with only one judge dissenting, that estoppel arises from any amendment that narrows a claim to comply with the Patent Act, not only from amendments made to avoid prior art. Id., at 566. More controversial in the Court of Appeals was its further holding: When estoppel applies, it stands as a complete bar against any claim of equivalence for the element that was amended. Id., at 574—575. The court acknowledged that its own prior case law did not go so far. Previous decisions had held that prosecution history estoppel constituted a flexible bar, foreclosing some, but not all, claims of equivalence, depending on the purpose of the amendment and the alterations in the text. The court concluded, however, that its precedents applying the flexible-bar rule should be overruled because this case-by-case approach has proved unworkable. In the court’s view a complete-bar rule, under which estoppel bars all claims of equivalence to the narrowed element, would promote certainty in the determination of infringement cases.

Source:

http://en.wikipedia.org/wiki/Prosecution_history_estoppel

http://en.wikipedia.org/wiki/Festo_Corp._v._Shoketsu_Kinzoku_Kogyo_Kabushiki_Co.

http://papers.ssrn.com/sol3/papers.cfm?abstract_id=455380

Biplab Dey

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Dolcera

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Allegations of cybersquatting by trademark holders continued to rise in 2008, with a record 2,329 complaints filed under the Uniform Domain Name Dispute Resolution Policy (UDRP), a quick and cost-effective dispute resolution procedure administered by the WIPO Arbitration and Mediation Center. This represented an 8% increase over 2007 in the number of generic and country code Top Level Domain (gTLDs and ccTLDs) disputes handled and brings the total number of WIPO cases filed under the UDRP since it was launched ten years ago to over 14,000.

In 2008 cases covered a wide variety of sectors, reflecting prevailing public interest, business activity and upcoming events (e.g., Singapore Flyer observation wheel, Madrid 2016 Olympic bid); transportation (e.g., Air France, Austrian Airlines, BMW, Lufthansa, Southwest Airlines, Subaru); hotels (e.g., Taj Hotels, InterContinental Hotels, The Sheraton/Westin Hotels); media and publishing (e.g., the BBC, Edmonton Journal, National Geographic, Harvard University Press); educational institutions (e.g., The John Hopkins University, Sydney University, Yale University, TOEFL); computers and electronics (e.g., Research in Motion’s BlackBerry, computer manufacturer Gateway, Samsung); sports teams, leagues and personalities (e.g., English Premier League, the Arsenal Football Club, as well as its player Cesc Fàbregas, yachting’s Volvo Ocean Race, former basketball star Dennis Rodman, Adidas)The most common business sector in which complaints arose was pharmaceuticals, due to websites offering sales of medicines with protected names. Other top sectors for complaints were banking and finance, Internet and telecommunications, retail, and food, beverages and restaurants etc.

“The creation of an unknowable and potentially vast number of new gTLDs raises significant issues for rights holders, as well as Internet users generally,” said Mr. Francis Gurry, WIPO Director General. “Cybersquatting remains a serious issue for trademark holders.

“It would have been interesting to look at systems that didn’t involve domains,” Tim Berners-Lee, who drafted a proposal 20 years ago that led to the Web, told an anniversary celebration

The Internet Corporation for Assigned Names and Numbers (ICANN), which manages the system of Web addresses with endings like .com and .gov, is preparing to launch many new series of suffixes.

Gurry said his U.N. agency was working with ICANN, a not-for-profit corporation based in California, on “pre- and post-delegation procedures” to check the proposed new suffixes and help avoid future litigation.

For instance a new suffix “.apple” could well upset the computer, phone and entertainment company Apple.

WIPO’s Arbitration and Mediation Centre will hold a conference in Geneva on 12 October, 2009 looking back at the first 10 years of the UDRP and ahead to the future.

The majority of the non-domain name cases filed with the WIPO Center involve patent related issues, followed by copyright and trademarks. Germany, the US, Switzerland, France, the Netherlands, and the UK have been the most frequent places of arbitration under the WIPO Rules.

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Biplab Dey

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Dolcera

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Cybersquatting

Cybersquatting (also known as domain squatting), according to the United States federal law known as the Anticybersquatting Consumer Protection Act, is registering, trafficking in, or using a domain name with bad faith intent to profit from the goodwill of a trademark belonging to someone else. The cybersquatter then offers to sell the domain to the person or company who owns a trademark contained within the name at an inflated price.

In Cybersquatting the domain names that are being “squatted” are (sometimes but not always) being paid for through the registration process by the cybersquatters. Cybersquatters usually ask for prices far greater than that at which they purchased it. Cybersquatting is one of the most loosely used terms related to domain name Intellectual property law and is often incorrectly used to refer to the sale or purchase of generic domain names such as example.com.

Strategies used by Cybersquatters

Cybersquatters sometimes register variants of popular trademarked names, a practice known as typosquatting. Typosquatting, also called URL hijacking, is a form of cybersquatting which relies on mistakes such as typographical errors made by Internet users when inputting a website address into a web browser. Should a user accidentally enter an incorrect website address, they may be led to an alternative website owned by a cybersquatter.

Another strategy is as follows: Internet domain name registrations are for a fixed period of time.

Yet another approach is “name jacking” (also “name-jacking” or “namejacking“) which is accomplished by purchasing an individual’s name as a second-level domain name. Setting up a website allows the purchaser to capitalize on any searches done for that name.

Legal Remedies for Cybersquatting

Domain name disputes involving alleged bad-faith registration are typically resolved using the Uniform Domain Name Resolution Policy (UDRP) process developed by the Internet Corporation for Assigned Names and Numbers (ICANN).

Court systems can also be used to sort out claims of cybersquatting, but jurisdiction is often a problem, as different courts have ruled that the proper location for a trial is that of the plaintiff, the defendant, or the location of the server through which the name is registered.

Some countries have specific laws against cybersquatting beyond the normal rules of trademark law. The United States, for example, has the U.S. Anticybersquatting Consumer Protection Act (ACPA) of 1999.

There have been several instances of companies, individuals or governments trying to take generic domain names away from their owners by making false claims of trademark violation. Sometimes they are successful. This practice is called “reverse domain hijacking“.

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Biplab Dey

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Dolcera

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