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Journal of Intellectual Property Rights

 

 

ISSN : 0971-5544

CODEN: JIPRFG 10(3) 171-262 (2005)

VOLUME 10

NUMBER 3

MAY 2005

 

 

CONTENTS

 

Articles

International Patent Law Harmonization — A Search for the Right Balance

177

Philippe Baechtold and Tomoko Miyamoto

 

 

The Internet, Creativity and Copyright Incentives

188

Paul Ganley

 

 

 

Generation and Application of Patent Claim Map: Text Mining and Network Analysis

198

Juneseuk Shin and Yongtae Park

 

 

Intellectual Property and Consortium Standard Patent Pools

206

Reiko Aoki

 

 

 

Intellectual Property Licensing: Discovering its Facets

214

Geetanjali Mehlwal

 

 

Patent Analysis as a Tool for Research Planning: Case Study of Phytochemicals in Tea

221

Rashmi Phadnis and R R Hirwani

 

 

 

Technical Notes

 

 

 

Inventive Step or Non-Obviousness of an Invention

232

R S Praveen Raj

 

 

 

The Patents (Amendment) Act, 2005 and TRIPS Compliance – A Critique

235

Manoj Pillai

 

 

 

Literature Review

 

 

IPR¾General

239

· Managing IP in the digital product market · siRNA as a new drug: Intellectual property · Counterfeiting and an optimal monitoring policy · Intellectual capital reports in India · Extracting value from intellectual assets · The nature of the international intellectual property system: Universal norms and values or western chauvinism? · Legal framework and IP : Realizing the concept of indigenous cultural rights in the new millennium · Protection of IPRs of indigenous knowledge in Tanzania · Looking beyond IP in resolving protection of the intangible cultural heritage of indigenous peoples

 

 

Patents

242

· Why pay for value-added information? · The impact of metadata on the accuracy of automated patent classification · Patent archives—the silent threat · Electronic non-text material in patent applications · INPADOC: 30 years of endeavours yet unmapped territories remain! · Independent inventors and public support measures · Cross comparison of US, EU, JP and Korean companies patenting activity in Japan and in the Peoples Republic of China · Twenty-five years in the international application of information technology (IT) and standards to process and disseminate patent information, from 1980 to 2004 · Evolution of industry knowledge in the public domain: Prior art searching for software patents · Embryonic cell patenting · Trade, patents and international technology diffusion · Exploitation on research tool patents in plant biotechnology: Access through application of the experimental use exception · Strategic debt and patent races · When does a patent right become an antitrust wrong? Antitrust liability for refusals to deal in patented goods · Patent infringement: Lessons from industrial economics · Immunizing university research from patent infringement

 

 

Copyright and Trademark

245

· Rights expression on digital communication networks: Some implications for copyright · The future of academic publishing · Copyright policies and the deciphering of fair use in the creation of reserves at university libraries · Does decrease in copying cost support copyright term extension? · Copyright: rights-holders, users and innovators · Confessions of an intellectual (property): Danger mouse, mickey mouse, sonny bono, and my long and winding path as a copyright activist-academic 1 · The political economy of IP protection: the case of software · NIH data and resource sharing, data release and IP policies for genomics community resource projects · Digital signature law of the United Nations, European Union, United Kingdom and United Stats: Promotion of growth in E-commerce with enhanced security · Virtual markets for virtual goods: the mirror image of digital copyright? · Photocopying and the awareness of copyright in tertiary institutions in Nigeria · Searching trademark databases for verbal similarities · Analysis of the factors that determine when and how to resolve a trademark dispute

 

 

IPR News

 

 

IPR News—General

250

· India gets tough in first publishing case · Ten more IPR chairs in universities · US proposes partnership program for WIPO · Intellectual property park set up · China faces difficult task in improving IPR protection · Law change creates rush to amend company rules

 

 

 

Patent News

252

· New initiatives to improve patent process and save applicants millions · Patents for solutions targeting enhanced heart monitoring and nano particle coatings · Altana sues Sun Pharma over pantoprazole patent · Forgent sues Microsoft for patent infringement · Medtronic to buy spine patents · US Judge rules Lilly's Zyprexa patent valid · Fourth FormFactor patent upheld by Korean Intellectual Property Office

 

 

Copyright and Trademark News

255

· China jails two US counterfeiters · PwC wins .eu sunrise contract · IPAB upholds decision not to grant trademark 'Dopamine'

 

 

 

Key Patents

257

· US patent for CIMAP’S invention on mint based product for UV protection · Layered light therapy patented · Web-based technology patented · Healthy chocolate · Long-lasting aroma · Microsoft patents 911

 

Author Index
Keyword Index
 

 

 

Journal of Intellectual Property Rights

Vol 10, May 2005, pp 177-187

 

International Patent Law Harmonization¾A Search for the Right Balance

Philippe Baechtold and Tomoko Miyamoto

 

While international patent law harmonization has been an issue in progress since the conclusion of the Paris Convention in 1883, it is facing new challenges due to the increased use of the patent system in the knowledge-based economy and the growing sensitivity to the patent system’s social and economic role for society. This paper addresses the historical development of international norm setting at the World Intellectual Property Organization (WIPO), including the ongoing negotiations on the draft Substantive Patent Law Treaty (SPLT), and highlights today’s international challenges surrounding the international patent system. The paper further examines a number of features that appear to be fundamental for a well-balanced patent system serving society as a whole, while supporting innovation. It concludes with some suggestions that may be considered for any future work in this area in order to find common ground in terms of bringing closer the operational principles of patent law and practices at the international level.

 

Keywords: Patent law, international harmonization, Substantive Patent Law Treaty (SPLT)

 

 

 

Journal of Intellectual Property Rights

 Vol 10, May 2005, pp 188-197

 

The Internet, Creativity and Copyright Incentives

Paul Ganley

 

The copyright industries savour their role as critical intermediaries in the copyright supply chain. To this end, they are continually seeking to strengthen their legal entitlements by arguing that stronger copyright incentives fuel future creative action. But the reality of creativity is different from the linear economic reward/action relationship that these industries promote. This reality has been brought into sharp focus by the seemingly limitless creativity that the Internet has unleashed. Much of this creativity occurs without reference to the incentive structure provided by copyright law and demonstrates the potential redundancy of several existing industry functions. The result has been a seemingly intractable tension between established industries and emergent modes of production and dissemination. The clearest examples of this tension are the current debates over the utility of peer-to-peer technology and the competition between proprietary and open source software development models. This tension, and the realities of creativity that underpin it are the subject of this paper. A diverse range of creative experiments facilitated by digital networked technology is considered and used as a backdrop to a general discussion on some of the areas where reforms to copyright’s existing incentive structure are most needed.

 

Keywords: Copyright, Internet, creativity, amateurs, digital rights management, P2P technology

 

 

 

Journal of Intellectual Property Rights

Vol 10, May 2005, p 198-205

 

Generation and Application of Patent Claim Map: Text Mining and Network Analysis

Juneseuk Shin and Yongtae Park

 

Despite the fact that patents are under intensive scrutiny for years, patent claim, the most ample source of information has been relatively unexplored. Patent claims mean the right over a patent.  Their overlaps by subsequently granted patents indicate the erosion of patent rights. In that regard, the issue of patent valuation and competitor strategy is very closely related with it. In addition, claims could be used to recognize technology relatedness. Therefore, in this research, an exploratory method to deal with patent claims using text-mining and network analysis has been proposed. First, a claim overlap profile is constructed to identify whether a specific claim overlaps another by applying text mining and domain expert knowledge. Secondly, network analysis is used to generate three kinds of patent claim map. This could help researchers, R&D managers and policy makers to evaluate patents and analyse competitors more accurately, and develop patent strategy more efficiently. In the long run, the patent claim profile and map could contribute to the overall technology management including new technology development, strategic positioning of technology and technology alliance.

 

Keywords: Patent claim, valuation, competitor, network analysis, text mining

 

 

 

Journal of Intellectual Property Rights

 Vol 10 May 2005, pp 206-213

 

Intellectual Property and Consortium Standard Patent Pools

Reiko Aoki

 

In this paper, patent pools are examined in the context of a consortium standard. Although such pools of complementary technologies are approved by antitrust authorities, the actual implementation has proved to be problematic. The two possible obstacles are free riding and heterogeneous membership. Free riding on the standard gives incentive for firms to always become an outsider. Heterogeneous membership makes equal treatment of members and licensees [(part of reasonable and non-discriminatory (RAND) policy)] leading to unfair distribution of revenue.

 

Keywords:   Patent pools, free rider problems, heterogeneity

 

 

 

Journal of Intellectual Property Rights

 Vol 10, May 2005, pp 214-220

 

Intellectual Property Licensing: Discovering its Facets

Geetanjali Mehlwal

 

The intangibility of intellectual property ensures returns to its owner, even after it has been offered to one party. It is said that the economic potential of a work determines the extent to which a work may be exploited. Accordingly, licensing is being looked as one of the most ‘rewarding’ aspects of intellectual property creation. Today, be it music, machines or software, most creators consider licensing as the next step for their creation. An intellectual property (IP) licence must reflect the quintessential element of all licensing agreements, that is, ‘a meeting of the minds’. It is noteworthy how the IP licensing process has evolved into a well-recognized source of national income. However, in the absence of an IP protection regime, international licences would be futile as individuals or companies would not be willing to pay for something that they can obtain without running the risk of accounting for their use to the IP owner(s). Countries have devised their own mechanisms to deal with IP theft of their corporations in other countries. International laws are also playing an instrumental role in combating the problem. Knowing one’s partner is vital for both the parties involved in licensing. This paper deals with the basic concepts of IP licensing and its importance. It also underlines the revenue generating power of IP with the global rise. For a practical understanding of the subject, the paper elucidates points for parties to bear in mind while drafting licensing agreements and the predominant types of IP licences in the market today.

 

Keywords: Revenue generation ability, intellectual property licence agreements, globall aspect, types of licences

 

 

 

Journal of Intellectual Property Rights

Vol 10, May 2005, pp 221-231

 

Patent Analysis as a Tool for Research Planning: Case Study of Phytochemicals in Tea

Rashmi Phadnis and R R Hirwani

 

The availability and ready access to computerized patent databases makes it possible to discover trends and relationships in research. Not all research gets published in papers and a lot of information is made available to the public through patents, a detailed analysis of patents granted on a particular area of research can provide some missing information. By analysing the patents and studying the prior art, the research gaps can be identified and the research work to be taken up can be focused.

 

The main aim of the work presented in this paper is the application of patent analysis in research planning.  For this purpose, tea, which has gained importance over the years for its medicinal properties, has been taken as a case study. Studying the synthesis and accumulation of catechins is the focus of research not only in India but also worldwide. Hence, a complete analysis of the patents granted on the work related to research on the steps of metabolic pathway of catechin was done and the results are presented in this paper. The analysis has been done using various criteria, like the patenting trend over the years, a comparison of the assignees playing a major role, a comparison of the technology used in different patents and the patenting activity across the groups.

 

Keywords: Patent analysis, tea phytochemicals, catechin biosynthesis pathway

 

 

 

Journal of Intellectual Property Rights

Vol 10, May 2005, pp 232-234

 

Inventive Step or Non-Obviousness of an Invention

R S Praveen Raj

 

This note briefly discusses the inventive step or non-obviousness of an invention. The concepts of skilled person, non-obviousness, judgement and some indicators of non-obviousness are also discussed briefly.

 

Keywords: Non-obviousness, skilled person

 

 

 

Journal of Intellectual Property Rights

Vol 10, May 2005, pp 235-238

 

The Patents (Amendment) Act, 2005 and TRIPS Compliance–A Critique

Manoj Pillai

 

The main objective behind the introduction and passing of the Patents (Amendment) Bill, 20051 was to meet India’s deadline, 31 December 20042, to comply with the TRIPS Agreement. While the Ordinance attempted to make the Indian patents law TRIPS compliant rather literally, the Patents (Amendment) Act, 2005 (hereinafter ‘the Act’) deviated from the Ordinance in certain fundamental respects. This note analyses the difference in the ‘language of law’ between the Ordinance and ‘the Act’. An attempt has also been made to analyse the implications of the amendments proposed in the Act to ascertain if the Act makes the Indian patents law TRIPS compliant.

 

Keywords: TRIPS compliant, inventive step, new inventions, Swiss-type ‘new use’ claims, software patents

 

 

Author Index

 

Aoki Reiko

206

Hirwani R R

221

Park Yongtae

198

 

 

 

 

Phadnis Rashmi

221

Baechtold Philippe

177

Mehlwal Geetanjali

214

Pillai Manoj

235

 

 

Miyamoto Tomoko

177

Praveen Raj R S

232

Ganley Paul

188

 

 

 

 

 

 

 

 

Shin Juneseuk

198

 

 

Keyword Index

 

Academic publishing

246

Indigenous knowledge

241

Research tool patents

244

Amateurs

188

Intellectual assets

240

Revenue generation ability

214

 

 

Intellectual property licence agreements

214

 

 

Ccatechin biosynthesis pathway

221

Intellectual property

239

Skilled person

232

Competitor

198

International harmonization

177

Software patents

235

Copyright

188

Internet

188

Spine patents

254

Counterfeiters

255

Inventive step

235

Substantive Patent Law Treaty (SPLT)

177

Counterfeiting

239

 

 

Swiss-type ‘new use’ claims

235

Creativity

188

Network analysis

198

 

 

 

 

New inventions

235

Tea phytochemicals

221

Digital rights management

188

Non-obviousness

232

Text mining

198

 

 

 

 

Trademark databases

249

Fair use

246

P2P technology

188

Trademark dispute

249

Free rider problems

206

Patent analysis

221

TRIPS compliant

235

 

 

Patent archives

242

Types of licenses

214

Globall aspect

214

Patent claim

198

 

 

 

 

Patent infringement

245

Valuation

198

Heterogeneity

206

Patent law

177

 

 

 

 

Patent pools

206