IBM's Move a Huge Boost for Open Source Movement

IBM, the largest patent owner in the United States, announced that they are granting access to some of their intellectual property to facilitate development of over 150 standards designed to make software interoperable. IBM anticipates that their move to lift restrictions on numerous patents may act as a catalyst for developing compatibility between future software applications and computing devices, developing more innovating products and services, and also reduce patent infringement litigation. The intellectual property available for developers involves specifications and protocols for industry standards set by the World Wide Web Consortium and the Organization for the Advancement of Structured Information Standards.

Previously, developers were required to acquire a licensing deal from IBM. But now, developers have free access potentially indicating that IBM wants their software patents to be integrated into open source projects. Additionally, IBM, in their press release, stressed that their commitment applies not only to distributors, developers or manufacturers implementing the specifications involved, but also to end users and consumers. IBM also imposed a condition that the “universal and perpetual access” is available as long as adopters are not suing any party over necessary patented technology needed for implementing the standards.

Personal Computer?

Microsoft Corporation’s published patent application (U.S. Patent Application Publication No. 2007/0157227) may move the personal computer into the world of targeted advertising. Microsoft’s patent application discloses an “advertising framework” that stores content data from various applications and makes this data available to advertisers. Advertisers may then use the framework to target specific computers according to data gathered by the software. For example, an application, such as Microsoft Word or Outlook, may serve as both the source of information for the advertiser and the display output for the advertiser.

According to the patent application, this type of targeted advertising is especially valuable to advertisers because it allows them to place advertisements that may be of greater interest to a particular consumer instead of just a blanket advertisement. While advantages for Microsoft include splitting revenue with the advertiser, Microsoft may face costs arising from concerns of privacy and security. The software giant may need to address the invasive nature of a software application that spies, stores and streams data from personal files and computer activity logs which may then be a potential target to hackers who can access both data stored and the data transmitted to advertisers.

Evel Knievel and Kanye West Agree to Settle Out of Court

In December 2006, famed daredevil Evel Knievel sued rapper Kanye West in a Florida District court for, among other things, trademark infringement and trademark dilution. Knievel claims that West infringed Knievel’s trademarked look in the music video for West's song "Touch the Sky". In the video, West wore a red, white and blue jumpsuit similar to the jumpsuit that Knievel wore during his daredevil jumps. Additionally, West used the handle "Evel Kanyevel", wore a distinctive "EK" belt buckle, and attempted to jump the Grand Canyon on a rocket-powered motorcycle.

According to the complaint, Knievel claims that the "vulgar and offensive" images in West's video damage Knievel's reputation. West's attorneys argued that the video amounted to satire. According to trademark law, parody use of a trademark is allowed if the use mimics that of the original.

On July 10, 2007, West indicated that he and Knievel will use a mediator to resolve the legal dispute outside of court.

Software Patents in the United States

Throughout the 1950s, 1960s and 1970s, the United States Patent Office refused to grant patents to inventions which used a calculation made by a computer. The Patent Office's rationale was that patents should not be granted to mathematical algorithms. The Supreme Court upheld this view in Gottschalk v. Benson (1972) and Parker v. Flook (1975).

However, the Supreme Court reversed course in Diamond v. Diehr (1981) when the Court ordered the Patent Office to grant a patent on an invention which substantially consisted of a computer program that calculated the time necessary for rubber to be cured. The Court reasoned that the invention was not an algorithm, but rather a process for curing and molding rubber.

Subsequent decisions by the Federal Circuit affirmed that a numerical calculation that produces a "useful, concrete and tangible result" is patentable. In 1995, the PTO made it easier to obtain software patents by establishing broad guidelines for examining and issuing software patents. Up to this point, Congress has not legislated on the patentability of software patents. However, the failure of Congress to change the law in response to the Federal Circuit allowing software patents has been interpreted as Congress' intent for courts to keep the current form of software patentability. In addition, the Supreme Court remains silent on recent software patent developments.

Debate Brewing over Patentability of Human Genes

Congress is currently faced with legislation that may preclude anyone from patenting genes. Expert opinion on this legislation has been mixed. Some experts base their arguments on the policy reasons that justify granting a patent: to encourage innovation and discovery by rewarding researchers. These experts opine that patenting genes may increase investments in businesses and prevent free riders from stealing ideas. Other experts take the opposite stance, arguing that patenting a human genome may violate the Supreme Court holding in Diamond v. Diehr that "laws of nature, natural phenomenon and abstract ideas" are not patentable. These experts are of the opinion that the human gene is a natural phenomenon and that protection should instead be granted to researchers at the test and drug level.

As current Patent Office practice stands, an individual may patent sequences of the human genome. Approximately 20% of the complete human genome is protected by issued patents. With this number steadily increasing, some practitioners in the field are concerned that allowing the USPTO to issue patents on the human genome may create monopolies and may even stifle research efforts. However, evidence of such an effect has been lacking. Regardless, U.S. Representative Xavier Becerra has introduced "The Genomic Research and Accessability Act," and this legislation is currently in front of the House Judiciary subcommittee on Courts, the Internet and Intellectual Property. Specifically, the bill seeks to amend title 35 of the United States Code to include section 106 which reads "Notwithstanding any other provision of law, no patent may be obtained for a nucleotide sequence, or its functions or correlations, or the naturally occurring products it specifies." If this bill is enacted, a patent issued before the enactment date would not be subject to the restrictions of the bill.

Rights to the "Zhirinovsky" Mark For Sale in Russia

Who is Zhirinovsky? Vladimir Zhirinovsky is the founder and leader of the Liberal Democratic Party of Russia, Vice-Chairman of the State Duma, and a member of the Parliamentary Assembly of the Council of Europe. For 77 million rubles, approximately three million dollars, you can buy the right to the "Zhirinovsky" mark to stick on a bottle of vodka. But Zhirinovsky himself is not selling this mark. He gave the rights to his name to a Moscow businessman named Sergei Kuznetsov in 1994. When Kuznetsov obtained the rights, he did not pay any money for the mark because Zhirinovsky simply wanted to publicize his name for political gain.

In addition to vodka, Zhirinovsky's name appears on several household products, including cigarettes, after shave, ice cream and mayonnaise. Kuznetsov is selling a total of eight trademarks that bear Zhirinovsky's name, including the diminutive form "Zhir." Despite Zhirinovsky’s popularity, products that bear family names are losing marketability in Russia because consumers are more concerned about the quality of the products than any family name that appears on the product. Regardless, for three million dollars, you can use the name of a leading Russian politician who has previously been involved in bloody fistfights in the State Duma to sell your own brand of vodka.

Apple Planning iPhone Nano?

According to a U.S. patent application published on July 5, 2007, Apple is attempting to patent an iPod-like device with a clickwheel that displays numbers. According to a Reuters report, an analyst at JP Morgan believes that the device will be a smaller, and likely less expensive, derivative of the iPhone.

The device described in the application has a touch pad that may be divided into one or more input areas, much like a rotary phone. The application also discloses a hand-held device with multiple functions including music player and cell phone functionality. The drawings in the application disclose a circular touch pad divided into the common elements of a phone interface.

Apple already offers both a high-end and low-end iPod, and a low-end companion to the iPhone will mirror Apple's iPod sales approach. The Reuters report predicts that Apple will price an "iPhone nano" at approximately $200-$300 less than the iPhone, which is currently $500 for a 4-gigabyte model and $600 for an 8-gigabyte model.

Patent Prosecution Highway Spans Two Continents

On July 2, 2007, the United Kingdom Intellectual Property Office (UK-IPO) and the Japan Patent Office (JPO) launched a twelve-month pilot program aimed to expedite the processing of patent applications filed in the United Kingdom or Japan. By creating a Patent Prosecution Highway between the two countries, intellectual property authorities in the UK and Japan hope to determine the demand for an expedited patent application process and to assess quality and efficiency advantages. Under this new process, after an applicant in either country receives an examination report from either the UK-IPO or the JPO, the applicant may then request an expedited examination of the corresponding application in the other country.

The highway is a result of an initiative by the two countries to stimulate invention and innovation and facilitate their industries to acquire patents throughout the world. While the pilot program is currently only between the UK and Japan, this Patent Prosecution Highway serves as a step towards a globally streamlined application process.

Anheuser-Busch Opposes Mark

If you attempt to guess the #1 rated brewery in America, you may not guess Capital Brewery. However, this Wisconsin brewery was designated as America's top rated brewery in 1998 by Beverage Testing Institute's World Beer Championships. Since then, Capital Brewery has been using the slogan "America's #1 Rated Brewery" on mugs, t-shirts, and on their website. In September 2005, Capital Brewery filed a trademark application in the U.S. Trademark Office to register their slogan, the mark was allowed by the Trademark Office, and then published for opposition.

In response, Anheuser-Busch filed a 156-page challenge to the registration in early June 2007 alleging that Capital Brewery may not register "America's #1 Brewery." As part of their argument, Anheuser-Busch stated that many breweries may use Capital Brewery's slogan because trademark status is not applicable to merely descriptive or misdescriptive phrases. Anheuser-Busch emphasized that their opposition is not focused on challenging Capital Brewery's use of the phrase, but instead they oppose Capital Brewery's action to register the mark.

If Anheuser-Busch's argument does not convince the Trademark Office, then the Wisconsin brewery that makes merely 17,000 barrels of beer each year may obtain registration.

The USPTO Launches Peer to Patent

On June 15, 2007, the USPTO, in conjunction with the New York Law School Institute for Information Law and Policy, released the new Peer-to-Patent system. The goal of the project is to encourage public participation in patent prosecution. With the consent of the inventor, the new system allows the community at large to submit information regarding prior art or even commentary on an application that may affect the patentability of an invention. However, the only art the system currently accepts is computer architecture, software and information security.

The process involves reviewing and discussing the application, researching to find prior art, uploading the relevant prior art references, evaluating the submitted prior art and providing the top ten references with commentary that were forwarded to the USPTO. With this launch, the USPTO hopes to demonstrate that organized public participation will benefit the quality of issued patents. If this project is successful, the Peer-to-Patent system will be expanded to include other art in addition to computer architecture, software and information security. Industry leaders have already participated in this opportunity including Intel, IBM, and Red Hat, among others.

But why only computer architecture, software and information security? The answer to this question may be found in the short history of patents in this subject matter. Software was not considered to be patentable until the mid-1980s and not really pursued until the mid-1990s. By this time, much of the prior art existed not as patents but as programs already operating in the market. As a result, the USPTO erroneously issued patents that did not meet the novelty and nonobviousness requirements. Therefore, by including the public in this examination process, the USPTO will gather more information about existing prior art and ensure that the patents are truly warranted in this art.

Google in the News Again

Recently, Google was involved in a trademark infringement suit with American Blind and Wallpaper Factory, as noted in this blog. Google is back in the news again, but this time involving their email system known as "Gmail." Since its inception in 2004, Gmail has been steadily gaining popularity over its other competitors within the United States, as well as countries around the world. Google is currently faced with trademark infringement actions for "Gmail" in Germany after already having tasted defeat in England and Switzerland.

In England, Google had to change its email service from "Gmail" to "Google Mail" after sparring with an English research firm called "Independent International Investment Research" who uses the name "G-mail" to refer to its financial analytics software. To avoid the potential of years of litigation, the search giant relinquished the trademark to the research firm. Therefore, all the new Google email clients in England received email addresses with the extension "@googlemail.com" instead of "@gmail.com."

In Switzerland, the search giant battled German venture capitalist Daniel Giersch. Giersch runs an electronic postal delivery business in Switzerland and Germany called "G-mail" which is short for "Giersch Mail." Interestingly, both Google and Giersch obtained registered trademarks to the name in 2005, but Giersch registered his mark a few months before Google. Swiss trademark officials do not check to see if a mark has been previously registered. They only determine if the name satisfies the threshold requirements of being a registered mark, and leave any challenges up to the relevant parties. Earlier this year, Google sought to gain sole control over the "Gmail" trademark, but the Swiss court dismissed Google’s argument that Giersch adopted the name in bad faith.

In Germany, Google is once again expected to lose to Giersch but a ruling is not anticipated until July 4, 2007. However, Google’s troubles in Europe may not yet be over as the trademark is being challenged in Poland by another party, and Giersch also owns the rights to the mark in Norway and Monaco.

Prior Art Under 35 U.S.C. 102

An invention must be novel to be entitled to a patent. To be novel, the prior art must not anticipate the claimed invention. Prior art constitutes all information that has been made available to the public in any form before a given date that may be relevant to an invention's novelty. Examples of prior art are patents, publications, presentations, working examples used in commerce and public demonstrations. 35 U.S.C. 102 sets forth the prior art that determines whether the invention described in a patent application is novel. The most frequently cited sections of 35 U.S.C. 102 by the Patent Office are (a), (b), (e) and (g).

35 U.S.C. 102(a) states that a person is entitled to a patent unless "the invention was known or used by others in this country, or patented or described in a printed publication in this or a foreign country, before the invention thereof by the applicant for patent." The date of invention is the effective date in 102(a), meaning that the prior art must be known or published before the date of invention. Although the U.S. Patent Office assumes that the application's filing date is the date of invention, the date may be sworn back by filing an affidavit and an oath or declaration.

35 U.S.C. 102(b) states that a person shall be entitled to a patent unless "the invention was patented or described in a printed publication in this or a foreign country or in public use or on sale in this country, more than one year prior to the date of the application for patent in the United States." The application's filing date is the effective date in 102(b), meaning that any prior art activity must be before this date. 102(b) art may also be based on acts by the inventor(s), and not just by another. An offer for sale of the invention's rights may not be considered an offer for sale of the invention and may therefore not be a bar. However, any offer for sale of the invention itself in the U.S. is a 102(b) bar if the offer occurred more than one year prior to the filing date. Additionally, a bar applies for public use of the invention in the U.S., even if the public use is not visible to the general public. However, if the invention's public use is for the purpose of testing or experimentation, then the statutory bar may not apply.

35 U.S.C. 102(e) bars a patent if the invention was described in a published patent application filed by another in the U.S. before the applicant's date of invention. Although patent applications are published eighteen months after their filing date, the prior art date is the earliest effective U.S. filing date or International filing date once the U.S. or International application has published. Simply put, if B files before A invents, and then A files before B's application is published, then B is still prior art because B's filing date is before A's invention date. Additionally, under this provision, the third party applicant's patent does not need to issue.

35 U.S.C. 102(g) allows the second to invent to become the patentee if the first to invent is not diligent in his or her reduction to practice. For example, if A conceives of the invention before B conceives of the invention, but B reduces the invention to practice before A reduces the invention to practice, then if A was not reasonably diligent in his or her reduction to practice, then B is entitled to the patent even though B was not the first to invent. On the other hand, A is entitled to the patent if he or she is able to prove reasonable diligence from a time before B conceived of the invention up until A was able to reduce the invention to practice.