Journal of Intellectual Property Rights

 

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VOLUME 14

NUMBER 1

JANUARY 2009

CODEN: JIPRFG 14(1) 1-104 (2009)

 

ISSN: 0971-7544

 

          CONTENTS

 

Articles

 

Basics of Writing Patent Non-Infringement and Freedom-to-Operate Opinions

7

            B P Nagori and Vipin Mathur

 

 

Parallel Imports and Trademark Law

14

            Sneha Jain

 

 

Methodology of Claim Construction after Phillips v AWH Corp: The Need for an Alternative Approach

 

28

            Adarsh Ramanujan

 

 

Bioinformatics: Scope of Intellectual Property Protection

46

            Raguvaran Gopalan

 

 

Currency Patents — The Anticipated Bust of an Economy

52

            Utsav Mukherjee

 

 

Analysis of the Commercial Use of Spanish Inventions Protected by Patents between 1996 and 2006

63

            Antonio Hidalgo

 

 

Literature Review

 

 

IPR―General

 

70

● Commercializing open science ● Negotiations of EU-China PCA ● IP protection for plant varieties in Jordan ● Control of intellectual assets in client relationships ● Genetic productivity gains under plant IPR ● Case law of EPO boards of appeal in 2007 ● How to break the deadlock ● Interoperability at IP-anti-trust interface ● A search for link between Basmati rice and India/Pakistan ● Systems biology, synthetic biology and IPIP protection of traditional textile designs ● IPR systems and the assemblage of local knowledge systems ● Addressing legal and political barriers to global pharmaceutical access ● IPR, technology transfer and exports in developing countries ● IP law and politics of scale in Indonesian arts ● Globalization and income inequalityThe IP gameImport tariff, IPR protection and foreign merger Impact of piracy on innovation at software firms Alternative damage rules and probabilistic IPR IPR in Philippines ● Recent international and regulatory decisions about GIs ● Heterogeneity of southern countries and IPR policy ● The online advertising ● Effect of TRIPS-mandated IPR on FDI in developing countries ● The Bayh–Dole Act ● A cross-national examination of consumer perceived risk in non-deceptive counterfeit brands

 

 

Patents

 

76

A model of small-firm patent signaling TK and international IP law Pre-grant patent publication and cumulative innovation Patent law and complementary innovationsA patent race R&D and the patent premium Analysing patents by chemical structure TRIPS and patenting activity What is behind China's recent patent explosion?● The growth effects of national patent policies ● Keyword-based patent map approach ● Applicant behaviour in patent examination request lagsPatent litigation insurance and R&D incentivesThe effect of patent laws on invention rates ● Generic competition and pharma patent strategies ● Stem cell patents on a knife edge ● Contributory infringement rule and patents

 

 

Copyright and Trademark

 

80

Institutional policy on copyright in UgandaPirates and Samaritans ● GIs and TK ● Copyright in twenty-first century ● Another dimension of copyright protection ● The Viacom-YouTube dispute ● Knut, Flocke and Co

 

 

IPR News

 

 

IPR News—General

 

83

WIPO enhances its global IP services Nations differ on broadcasters' rights Lok Sabha passes bill to protect agricultural products ● Valkyrie producers may be sued over Hitler globe ● More IPR tribunals ● IPR cases in China increase sharply ● DTI-IP Philippines open IPSO ● US to provide $250,000 for IPR training ● IPR in Bali ● Indonesia to support GI issue ● USPTO report to Congress on China AGIP enhances IP relations with Japan Government challenged on IP ● US IP attachés take hard-line position

 

 

Patent News

 

87

● IV starts buying patents from India ● No generic drugs for patented drugs ● CSIR leasing out patents ● Patent ruling on breast cancer gene test could stifle innovation

 

 

Copyright and Trademark News

 

88

● South Wales Police seized 1,800 flash carts Meeting fails, music war rages ● Law against piracy ● Tennessee industry watches new downloading law closely ● Sindh High Court to hear Basmati issue ● Copyright Board: Independent organization ● Customs Bureau, destroy confiscated counterfeit Honda Motors ● Canadian Copyright Board increases blank media levy rates ● Copyright law could be extended ● Popeye the Sailor copyright free ● CCTV.com sued for copyright infringement ● Eleven jailed in $2 billion software piracy case ● Prominent film singers accused of copyright breach ● Copyright on Mahatma's works ● Lamphun silk regain lost glory ● Radio Mirchi launches anti-piracy campaign ● Hollywood urges Obama to press China ● EPB seeks IPR protection for 5 UP products ● Ghajini in court ● India to sign bilateral pact with UK ● WIPO-Singapore treaty on trademarks File sharing reaches the masses ● Copyright v2.0 ● UK: New copyright rules

 

 

Key Patents

 

95

● Folding electric bike ● Patent for appendicitis diagnostic methods  ● US patent for Rifaximin ● World's first solar module component made from renewable materials ● Patent on Internet protocol European patent for Qnexa ● Methods of use for Bupropion and Naltrexone in obesity

 

 

Book Review

 

 

The Business of Intellectual Property

98

            Christopher M Arena and Eduardo M Carreras

 

 

Understanding and Profiting from Intellectual Property

99

            Deli Yang

 

 

Holyoak and Torremans Intellectual Property Law

100

            Paul Torremans

 

 

 

 

 

 

                              Author Index

Gopalan Raguvaran
                46
Hidalgo Antonio 63
Jain Sneha 14
Mathur Vipin 7
Mukherjee Utsav 52
Nagori B P 7
Ramanujan Adarsh 28

 

       

                       Keyword Index

 

Bioinformatics
46
Claim comparison
7
Claim construction
7, 28
Clearance search
7
Compulsory license
52
Computational biology
46
Copyright
46
Currency 
52
Data mining
46
Database
46
Economy 52
Exhaustion of rights 14
Extrinsic sources 28
Freedom-to-operate 7
Genes 46
Gray goods  14
Indian law 14
Infringement 7
Infringement analysis 7
Infringement 14
Intellectual property 63
Intrinsic sources 28
Inventions 63
Molecular biology 46
Parallel imports 14
Patent practice 7
Patent regime 52
Patent 7, 28, 46, 52
Patents 63
Phillips 28
Prior art 7
Prosecution history estoppel 7
Software 46
Texas Digital 28
Trade secret 46
Trademarks 14
TRIPS Agreement 52

 

 

 

 

Journal of Intellectual Property Rights

Vol 14, January 2009, pp 7-13

 

 

Basics of Writing Patent Non-Infringement and Freedom-to-Operate Opinions

B P Nagori and Vipin Mathur

Lachoo Memorial College of Science and Technology (Pharmacy Wing), Sector A, Shastri Nagar, Jodhpur, Rajasthan 342 003

Received 31 December 2007, revised 7 August 2008

Non-infringement and freedom-to-operate (FTO) opinions are legal advice given by a patent attorney with an objective to avoid infringement of other’s patent(s) by his client. These opinions set forth the attorney’s viewpoint on the non-infringing position of the client’s proposed product/process/technology. The basics of writing both the opinions are same except that rendering a FTO opinion requires comprehensive searching of existing relevant patents by the attorney, whereas a non-infringement opinion is rendered on one or more relevant patents already identified by the client. In a competent non-infringement or FTO opinion, the patent attorney analyses each claim of every identified relevant patent in a step-by-step manner through a process called as infringement analysis. The infringement analysis is based upon certain legal principles, which help the attorney in determining non-infringing position of the client’s proposed product/process/technology. Nowadays non-infringement or FTO opinions are frequently used as important business strategic tools by companies since these opinions assist greatly in critical decision areas like launching of a new product, acquisitions and mergers, contract manufacturing and designing of R&D strategy.

Keywords: Patent, infringement, freedom-to-operate, patent practice, clearance search, prior art, infringement  analysis, claim construction, claim comparison, prosecution history estoppel

 

 

Journal of Intellectual Property Rights

Vol 14, January 2009, pp 14-27

 

 

Parallel Imports and Trademark Law

Sneha Jain†

ILS Law College, Law College Road, Pune 411 004, Maharashtra

Received 31 July 2008, revised 8 January 2009

Parallel importation has assumed much importance with the opening up of global markets and effective implementation of price differentials. While exponents of this practice often quote economic benefits that accrue to the ultimate consumers as a result of parallel importation, its critics usually assert monopoly rights of the owner over his products and their disposition. In this context, a study of the avenues available, especially under trademark law, to the owner to protect his rights and the exceptions thereto are imperative. The paper outlines concept of trademark, its territorial application, and principle of exhaustion as a counter measure against stifling effect of trademark territoriality. It identifies parallel importation as a practise that exploits the principle of exhaustion. Discussion on advantages and disadvantages of parallel importation has lead to the conclusion that a via media needs to be adopted to ensure a balance between owner’s right and consumer’s interest. The rules regulating parallel importation in two major jurisdictions, United States and European Union (more aptly the European Economic Area) are discussed followed by the Indian position. Due to the lack of discussion on the topic by jurists or by judiciary, there is ample room for creative arguments from both sides of the debate.

Keywords: Parallel imports, exhaustion of rights, trademarks, infringement, gray goods, Indian law

 

 

Journal of Intellectual Property Rights

Vol 14, January 2009, pp 28-45

 

 

Methodology of Claim Construction after Phillips v AWH Corp: The Need for an Alternative Approach

Adarsh Ramanujan†

National Law University, NH-65, Nagour Road, Mandore, Jodhpur 342 304 (Rajasthan)

Received 30 May 2008, revised 30 December 2008

Patents are considered as one of the most important and critical intellectual properties. This is so not just because patents serve to develop scientific temper and thereby result in scientific progress, which is very critical for any civilization to develop. This is also because, economically, patents are the most reaping. The emergence of the TRIPS regime has only served to underscore its significance.

Given that patents are of much significance, patent claims, which define the area of the patentee’s monopoly – play the most important role. Despite their significance, the author feels that patent claims have not received as much importance as they deserve. This is especially so with reference to principles of claim construction. World over, courts and patent offices seem to be meandering and wavering in their approaches towards claim construction and the USA is no exception. This article attempts to critically analyse the recent en banc decision of the Federal Circuit in Phillips v AWH Corp and trace the evolution of principles of claim construction as applied in the USA. The implications, ramifications and faults with the approach in the Phillips case are observed and the author has proposed an alternative approach to construe and interpret claims.

Keywords: Claim construction, patent, Phillips, Texas Digital, intrinsic sources, extrinsic sources

 

 

Journal of Intellectual Property Rights

Vol 14 January 2009, pp 46-51

 

 

Bioinformatics: Scope of Intellectual Property Protection

Raguvaran Gopalan

National Law School of India University, 7201 Nagarbhavi, Bangalore 560 072

Received 23 July 2008

Bioinformatics is a new field of science which marks amalgamation of one of the oldest areas of research and deliberation in human civilization, life sciences, with one of the latest and still largely developing areas, information technology. This paper is a study of this field of bioinformatics and scope and application of intellectual property rights (IPR) to this area. The paper seeks to understand basics of bioinformatics, through an examination of varied definitions on offer. Various streams of research, which constitute, or rather create a need, for bioinformatics are looked upon. The paper examines trend of growth in this field, and analyses factors which necessitate contemplation of applying IPR. Objections that have been raised to the application of IPR to the innovations and inventions in this field are also covered. Finally, the paper makes an assessment of the exact nature of IPR which will best suit the field of bioinformatics.

Keywords:   Bioinformatics, database, software, copyright, patent, trade secret, genes, molecular biology, computational biology, data mining

 

 

Journal of Intellectual Property Rights

Vol 14, January 2009, pp 52-62

 

 

Currency Patents ¾ The Anticipated Bust of an Economy

Utsav Mukherjee†

National Law University, Jodhpur NH-65, Nagour Road, Mandore, Jodhpur, NE 34230 Rajasthan

Received 29 July 2008, revised 10 January 2009

The effect of fluctuations in the value of a currency is a matter for serious thought. Patents are heralded to be the future of the world, providing stepping stones to a better future. But the effect of holding a patent on a currency is a problem that has not yet come to the fore. This paper is an attempt to bring out the possible impact of patents held on various components of currencies –‘currency patents’ on the value and operation of the currencies in which they are incorporated. The paper is based on the current trends of economies and general behaviour of market and highlights why exactly an economic breakdown can occur because of currency patents.

Keywords: Patents, currency, economy, Patent regime, TRIPS Agreement, compulsory license

 

 

Journal of Intellectual Property Rights

Vol 14, January 2009, pp 63-69

 

 

Analysis of the Commercial Use of Spanish Inventions Protected by
Patents between 1996 and 2006

Antonio Hidalgo

Department of Business Administration, Universidad Politécnica de Madrid, José Gutiérrez Abascal 2, Madrid 28006, Spain

Received 11 September 2008

Patents are indicators of the organization’s output and reflect its level of technological development. Today they have become a key commercial asset, which is why there is increasing interest in their study from the perspective of their monetary value and their economic use. However, the exact number of actually used patents and their actual implementation is not known. In this study, the level of commercialization of Spanish patents granted by the Spanish Patent and Trademark Office (SPTO) during the period 1996-2006, and their rate of economic return has been identified and analysed for the agents developing them. The results obtained show there is still a wide margin for the economic agents to make more efficient use of this intellectual property tool.

Keywords: Patents, intellectual property, inventions