Journal of Intellectual Property Rights
http://www.niscair.res.in
VOLUME 14
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NUMBER 1
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JANUARY 2009
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CODEN:
JIPRFG 14(1) 1-104 (2009)
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ISSN: 0971-7544
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CONTENTS
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Articles |
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Basics
of Writing Patent Non-Infringement and Freedom-to-Operate Opinions |
7 |
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Parallel Imports and Trademark
Law |
14 |
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Methodology of Claim Construction after Phillips v AWH Corp: The Need
for an Alternative Approach |
28 |
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Bioinformatics:
Scope of Intellectual Property Protection |
46 |
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Currency
Patents — The Anticipated Bust of an Economy |
52 |
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Analysis of the Commercial
Use of Spanish Inventions Protected by Patents between 1996 and 2006 |
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Literature
Review |
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IPR―General |
70 |
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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 ● |
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Patents |
76 |
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A model of small-firm patent signaling ● TK and international IP
law ● Pre-grant patent publication and cumulative
innovation ● Patent law
and complementary innovations ● A 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 lags ● Patent
litigation insurance and R&D incentives ● The 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 |
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Copyright and Trademark |
80 |
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Institutional policy on copyright in |
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IPR
News |
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IPR News—General |
83 |
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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 |
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Patent News |
87 |
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IV starts buying patents from |
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Copyright and Trademark News |
88 |
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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 |
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Key Patents |
95 |
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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 |
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Book Review |
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The Business of
Intellectual Property |
98 |
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Christopher
M Arena and Eduardo M Carreras |
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Understanding
and Profiting from Intellectual Property |
99 |
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Deli Yang |
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Holyoak
and Torremans Intellectual Property Law |
100 |
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Paul Torremans |
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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 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
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| Gray goods | 14 |
| Indian law | 14
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| Infringement | 7 |
| Infringement analysis | 7 |
| Infringement | 14 |
| Intellectual property | 63 |
| Intrinsic sources | 28 |
| Inventions | 63 |
| Molecular biology | 46
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| 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
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†
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,
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,
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
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†
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†
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,
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