Michael Jackson's estate will keep busy protecting IP rights
Tresa Baldas
June 26, 2009
It's a copyright and trademark nightmare waiting to happen.

Intellectual property lawyers are anticipating a slew of legal battles involving the exploitation of Michael Jackson's name, music and image, largely by scammers seeking to capitalize on the pop star's life and death.

EPO 特許明細への先行技術の記載


Patent attorneys will be well aware that not mentioning relevant prior art known at the time of filing cannot of itself make a European application or patent invalid. The examiners for application 06024212.0, however, apparently thought differently, contrary to long-standing EPO practice. From a rather strained interpretation of the German version of the relevant rule, the examining division's view was that not including a reference to relevant prior art known to the applicant at the time of filing would make the application void ab initio. The application was refused as a result.

In the resulting decision T 2321/08, the Board considered that the examining division had got it completely wrong. Rule 42(1)(b) did not put any stringent obligation on the applicant to cite relevant documents known at the time of filing, and failure to do so was in any case correctable after filing by making appropriate amendments.

Rule 42
Content of the description

(1) The description shall:
specify the technical field to which the invention relates;
indicate the background art which, as far as is known to the applicant, can be regarded as useful to understand the invention, draw up the European search report and examine the European patent application, and, preferably, cite the documents reflecting such art;

ブログ紹介 Law Department Management

Dear Mr. Morrison,

Thank you very much for your generous email informing me of your intention to offer law department management and patents related information. your blog is very informative. One of my favorite blogs. I want to know everything about IP department of the U.S. corporations, such as how many people work for IP dept. or how much budget they use in a year or how does a U.S. corporation evaluate IP dept.'s performance.
I hope you will post more IP related articles on your blog.


外国企業の法務部門の活動を知りたいと思ってIn-House Lawyer関係のブログをいくつかチェックしています。

Law Department Management



13 more blogs or sites that have directed visitors to LawDepartmentManagement Blog Some 14 referral sources are mentioned and thanked in a previous post (See my post of June 17, 2009: 14 referral sources in two days). Since then I have been collecting additional ones, and I also am grateful to them.
(Adrian Dayton)
(Integreon, Ron Friedmann)


---- Mail from Mr. Morrison ----
I can't read your blog, unfortunately, but I have had 20-30 hits on mine over the past several days. I appreciate it.
Let me know what kind of information you like, since I have about 50 related to law department management and patents. You are most welcome to repurpose any of them -- that is, cite to them or comment on them or collect them as a group.

Rees Morrison
Law Department Consulting
4 Hawthorne Ave. [Ste. 2A]
Princeton, NJ 08540-3840
(973) 568-9110 -- cell
Host of www.lawdepartmentmanagementblog.com



日本の大学は異常にInternational Faculty Score とInternational Students Score が


19 University of Tokyo Japan
Academic Peer Review Score 100
Employer Review Score 94
Student to Faculty Score 98
International Faculty Score 27
International Students Score 40
Citations per Faculty Score 78

25 Kyoto University Japan
Academic Peer Review Score 99
Employer Review Score 87
Student to Faculty Score 80
International Faculty Score 30
International Students Score 26
Citations per Faculty Score 91

26 University of Hong Kong Hong Kong
Academic Peer Review Score 94
Employer Review Score 90
Student to Faculty Score 86
International Faculty Score 100
International Students Score 92
Citations per Faculty Score 59

30 National University of SINGAPORE(NUS) Singapore
Academic Peer Review Score 100
Employer Review Score 98
Student to Faculty Score 39
International Faculty Score 100
International Students Score 100
Citations per Faculty Score 75

39 Hong Kong University of Science & Technology Hong Kong
Academic Peer Review Score 86
Employer Review Score 90
Student to Faculty Score 60
International Faculty Score 100
International Students Score 97
Citations per Faculty Score 72

残業禁止 アップデート

"All non-production, non-revenue generating overtime has been suspended. Overtime that is revenue producing has been limited."
Funding for Travel, Training, Office Supplies, Contracts and Events have all been curtailed.
Funding for the Legal and Technical Studies program (Law School) has been suspended, as of March 16th.
Funding for the After Work Education Program has been suspended as of March 20th.



新USPTO長官  Mr. David J. Kappos (IBM)

(271), (Press release)
Comment Of Senator Patrick Leahy (D-Vt.),
Chairman, Senate Judiciary Committee,
On The Designation Of David J. Kappos
To Be Undersecretary Of Commerce For Intellectual Property
And Director Of The U.S. Patent And Trademark Office
June 18, 2009


米国 In re Bilski アップデート

Thus, section 101 rejections currently have a 92% rate of being at least partly affirmed at the BPAI in 2009
Business methods need patents (Law.com)
Supreme Court should acknowledge our tech-based economy and reverse Bilski.
Wayne P. Sobon
May 25, 2009
Technology Claims Face High Level of Scrutiny(Law.com)
In light of 'Bilski,' the PTO raises the bar for some high-tech, electronics and software patentsBy Leigh John Martinson
The National Law Journal
May 12, 2009
Bilski Beatdown: Holders of Business Method Patents May Be Holding "Worthless Stock" (271)
カリフォルニア北部連邦地裁での判決です。“over the Internet” との記述では特定の機械や装置に結びついたことにならないと判示されたのが中々興味深いです。

This court is now presented with the question of whether recitation of “over the Internet” suffices to tie a process claim to a particular machine. There are at least three reasons why it does not.
Patentable Subject Matter Redux: Bilski 2009  (PatentlyO)
In February 2009, the Board of Patent Appeals (BPAI) issued nine decisions that touched on Bilski and patentable subject matter under Section 101 of the Patent Act. In eight of the cases, the BPAI either affirmed an examiner's Section 101 rejection (five cases) or entered a new ground of rejection under Section 101 (three cases). In the remaining case, the BPAI remanded - asking the examiner to consider wether the claims were patentable under Section 101. All nine cases were related to software or electronics type applications.
(from PatentlyO)
Ex parte Atkins (BPAI 2009)
BilskiのCAFC大法廷判決に対し、Equitable Resources Inc. (Bilski)は最高裁へPetitionを提出しました。
(from PatentlyO)
Bilski Petitions the Supreme Court to Decide Issues of Patentable Subject Matter
The petition asks two questions:
Whether the Federal Circuit erred by holding that a “process” must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing … despite this Court’s precedent declining to limit the broad statutory grant of patent eligibility for “any” new and useful process beyond excluding patents for “laws of nature, physical phenomena, and abstract ideas.”
Whether the Federal Circuit’s “machine-or-transformation” test for patent eligibility, which effectively forecloses meaningful patent protection to many business methods, contradicts the clear Congressional intent that patents protect “method[s] of doing or conducting business.” 35 U.S.C. § 273.

(from PatentlyO)
The BPAI and the Machine or Transformation test of Bilski Opinions
 Ex parte Gutta (BPAI 2009)
 Ex parte Barnes (BPAI 2009)
 Ex parte Becker (BPAI 2009)
 Ex parte Cornea-Hasegan (BPAI 2009)
 Ex parte Bo Li (BPAI 2008)
(from PatentlyO)
Federal Circuit Invalidates Immunization Patent for lack of Patentable Subject Matter
Classen Immunotherapies v. Biogen IDEC (Fed. Cir. 2008)(Nonprecedential)

"In light of our decision in In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc), we affirm the district court's grant of summary judgment that these claims are invalid under 35 U.S.C. § 101. Dr. Classen's claims are neither "tied to a particular machine or apparatus" nor do they "transform[] a particular article into a different state or thing." Bilski, 545 F.3d at 954. Therefore we affirm."
(from PatentlyO)
BPAI: PTO Should Apply Broadest Reasonable Claim Interpretation to Section 101 Analysis
Ex parte Koo (BPAI 2008)
Acting sua sponte, a BPAI panel recently entered a new ground for rejection against an IBM patent application: That the claimed process is unpatentable subject matter based on the Federal Circuit's recent en banc decision in Bilski. The claim is directed to a method of optimizing relational database queries and appears to be specifically directed to speeding up queries where a table is joined to itself...(more)
Pursuant to Federal Rule of Civil Procedure 16(b) and Local Rule 3.09(a), Defendants Bank of America, Corporation and Bank of America, N.A. (“Defendants”) hereby move to amend the April 25, 2007 Case Management and Scheduling Order (Doc. #38) to permit a brief period for discovery, disclosure of expert reports, and dispositive motions relating to the Federal Circuit’s recent decision, In re Bilski, 545 F.3d 943 (Fed. Cir. 2008) (en banc) (Exhibit A hereto). Defendants submit this motion concurrently with their Proposed Amended Case Management and Scheduling Order. In support of their motion, Defendants state as follows...(more)
Bilski and Business Methods
(from IP Today)
In Re Bilski: The Good, The Bad and The Unanswered - Establishing a Framework for Order in the Patent World
(from IP Today)
BPAI: “Programmed Computer Method” Not Patentable Subject Matter
Bilski後のBPAIデシジョンです。(from PatentlyO)
Software Method Claims: Bilski in light of Benson
(from PatentlyO)
Musings on Software Patents & Innovation
(from PLI)
Post-Bilski Computer-Readable Medium Claim Patentable
(from I/P Update)
Post-Bilski at the USPTO: Is the BPAI Looking to Create a "Software Per Se" Exception?  (from 271) (BPAI decision) (Request for Rehearing)
Survey results: Would Metabolite's claim 13 be found patentable under the reasoning of Bilski?
 (from PatentlyO)
Software Should Be Patentable
 (from PatentFools)
Responding to Groklaw Regarding Bilski
 (from PLI)
Post-Bilski BPAI Approves of Beauregard Claims
 (from PatentlyO)
BPAI still let Beauregard software claims pass §101
 (from Patent Prospector)
In re Bilski Podcast
 (from IP colloquium)
Applying Bilski to Metabolite’s Diagnosis Claim
 (from PatentlyO
Getting Physical
 Non-final office action, received post-Bilski,
 (from Patent Prospector
As India evolves its patent guidelines, it must ensure that it doesn’t blindly copy the US and the EU
 (from livemint)
More Bilski News
 (from Chicago IP Litigation)
Bilski Leading to Filing of Reissue Applications
 (from PLI)
In Re Bilski: Did Computer and Software "Machines" Get a Pass?
 (from 271)
Applying Bilski to Biotechnology and the Life Sciences
 (from PatentlyO)
Divining Bilski
 (from Patent Prospector)
Bilski: No machine or transformation, no patentable method, at least for now
 (from Filewrapper)
In re Bliski CAFC判断下る!
 (from 過去記事)
ソフトウェアクレームドラフティング (after Bilski)
 (from 過去記事)


Ocean Tomo, LLC, announced on Tuesday that it has entered into a ten year relationship with ICAP(IAP.L), to further build the market forintellectual property based transactions. The agreement included the acquisitionof the Ocean Tomo transactions division by ICAP through a newly created companyto be called ICAP Ocean Tomo.


Ocean Tomo has sold its famed but struggling patent auction business to British brokerage ICAP for $10 million, the companies announced Tuesday.
The sale of Ocean Tomo's transaction department, which includes the auction and patent brokerage, comes as revenue has plunged and key transaction leaders have left the company.

Ocean Tomoが主催した前回のIPオークションでは落札額がかなり減少していました。今の世界的な不景気の影響もありIPビジネスの先行きも不透明のようです。

翻訳料百万ドル! アップデート

After reducing Daiichi’s requested costs by approximately 40% (including most notably a substantial reduction in translation costs awarded), the district court awarded costs, which are summarized as follows:
Fees of Clerk                   $ 75.00
Service of summons & subpoena       $ 1,676.81
Court reporter fees:Trial transcripts    $ 31,225.18
Pre-trial hearing transcripts         $ 4,924.20
Deposition transcripts             $ 112,911.70
Witness fees                   $ 53,939.94
Exemplification & copying fees        $ 89,424.20
Interpretation                  $ 24,512.36
Translation                 $ 1,011,712.00
Total                        $ 1,330,401.39


Ortho-McNeil Pharmaceutical, Inc. v. Mylan Laboratories, Inc. (Fed. Cir. 2009) via PatentlyO


特許翻訳 ネイティブチェック

I have a question regarding antecedent basis in claims.

I work for a Japanese patent law firm that translates Japanese patents into English to be prosecuted in the US. I have not yet attempted the US patent bar, but have been working here for several years correcting translations done by Japanese translators whose first language is not English.

I frequently have arguments with translators concerning antecedent basis because in the Japanese language, there is no use of articles such as "a/an" and "the".

English language patents translated by Japanese tend not to use "the" in the claims for things that have inherent antecedent basis. For example, "a weight of said object is in a range of 10 to 50 g" is used instead of "the weight of said object is in the range of 10 to 50 g". Here, it is my understanding that since it is impossible for any single object to have more than one weight and any given point in time, "weight" has inherent antecedent basis with respect to "said object". I argue that "the range" should be used, as it implies that it is the one specific range intended to limit the weight of the object.

Is my understanding incorrect? More importantly, has there been any precedent in which giving antecedent basis to something that inherently has antecedent basis has caused a problem in case law?

I would appreciate any input. Thanks.

You're always better off using "a/n" rather than "the" for the first use of a term. You can use "the" for the first use if the term is an inherent feature of the claimed invention. The problem with this, if the examiner calls you on it, is that you now have to argue something is or is not inherent to the claimed invention.

Do you really want that on the record?


上記質問者が例示したのと同じような事例があって、特許事務所へ米国出願明細の修正を依頼したことがあります。つまり the → a の修正。この時、特許事務所の担当者からは「ネイティブのチェックをきちんとしていて問題ないと言われているが、客先の好みですから直します」と、嫌味とも、事務所の悲哀ともとれる返事をもらいました。


日本 企業弁護士(英語が話せること)の給料

Compensation data from nearly 500 English-speaking lawyers (bengoshi) employed in corporate legal functions in Japan

  • Finance ¥20.4MM;
  • Manufacturing ¥17.6MM;
  • Insurance ¥15MM;
  • Technology ¥14.6MM;
  • Life Sciences ¥14.4MM;
  • Other ¥8.9MM;
  • Advertising and Consumer ¥6.5MM

フォーラムショッピング3 アップデート

More Defendants Seek to Blast out of Patent 'Rocket Docket'
IP lawyers report increasing number of motions to transfer from Eastern District of Texas
以前、フォーラムショッピングに関するデシジョンを紹介しましたが、(LINK) (LINK) TS Tech判決以後CAFCは裁判管轄に関する請願でにぎやかなようです。
(Fed. Cir. 2009)
2009/5/22 09-M897.pdf DCT
In Re Volkswagen of America, Inc. [order] P
2009/5/22 09-M901.pdf DCT
In Re Genentech, Inc. [order] P



中国 遺伝子特許出願動向



Former Pillsbury Winthrop Associate Suspended for Inflating His Job Title



"They said, 'Let's do to others what TI and IBM did to us.'"

クイ・タン 有り?

"qui tam" statutes, マージャンの話題ではありません。


The constitutionality of a law allowing anyone to sue in the name of the government if they have evidence that a company is guilty.
The person who sues gets to keep half of any money awarded, with the rest going to the government. Damages of up to $500 per violation.

コーヒーカップの蓋に、既に権利消滅した特許のマーキングがされていることに気がついた弁護士が、その蓋の製造メーカーを、"qui tam" statutesを楯にして2007年に訴訟を起こしました。最近その公判があったようです。


2匹目の泥鰌を狙って、5月にある弁護士がBrooks Brothersを訴えたようですがこれはあえなく裁判所で門前払いをくったとのことです。



“It’s better to keep your mouth shut and be thought a fool than to open it and remove all doubt.” (リンカーンの言葉だそうです)


Those who are not familiar with patent law should not comment on patent law as if they are experts


米国 ジェプソンクレーム


Endangered Species: the Jepson Claim (LINK)

Rowe v. Dror, (Fed. Cir. 1997)
Pennwalt Corp. v. Durand-Wayland Inc., (Fed. Cir. 1987) (en banc)


EPO セミナーへのリンク

Searching and documentation (LINK)

CAFC Tafas v. Doll 再・ヒヤリング請願

Dr. TafasがTafas v. Dollに関し、CAFCにパネルまたは大法廷によるrehearingを請願したそうです。


中国 中国から国外への出願傾向



EPO Patlib2009のプレゼン資料が公開されました。





Article One Partners Uncovers New Prior Art Impacting the Validity of Merck's SINGULAIR...

Merck社のプレスリリース (LINK)
Merck Statement on United States Patent & Trademark Office Decision to Reexamine the SINGULAIR® Patent
WHITEHOUSE STATION, N.J., May 29, 2009 - Merck & Co., Inc. today provided the following statement regarding the decision by the U.S. Patent and Trademark Office (PTO) to reexamine the SINGULAIR patent.



冬の時代 アップデート

What Went Wrong (LINK)
In the aftermath of Morgan & Finnegan's dissolution, the search for clues that might help explain the death of the firm points in several different directions. (From the June/July issue of IP Law & Business.)
By Dan Slater
IP Law & Business
June 01, 2009
Morgan & Finnegan解散していたんですね。しらなかった。。。年間500件以上も特許を扱う法律事務所が潰れるなんて・・・

IP Today 2007年3月号より
Morgan & Finnegan

Pls Hndle Thx: Get Rich or Die Tryin'

Bilski 最高裁裁量的上訴を受理


(PatentlyO) (271) (Filewrapper) (Law.com) (ABA Journal) (IPWatchdog)
CNNMoney.com: "US Supreme Court To Hear Case On Patents For Business Methods" (link)
Bloomberg.com: "Business-Method Patents Will Get U.S. Supreme Court Scrutiny" (link)
Legal Times Blog: "Supreme Court Will Hear Bilski Patent Case" (link)


Scotus Blogに掲載されているBilski関連ドキュメントへのリンク集です (LINK)
Docket: 08-964
Title: Bilski v. DollIssue:
Whether a “process” must be tied to a particular machine or apparatus, or transform a particular article into a different state or thing (”machine-or-transformation” test), to be eligible for patenting under 35 U.S.C. § 101 and whether the “machine-or-transformation” test for patent eligibility, contradicts Congressional intent that patents protect “method[s] of doing business” in 35 U.S.C. § 273.
Opinion below (Federal Circuit)
Petition for certiorari
Brief in opposition
Petitioner’s reply
Brief amicus curiae of Boston Patent Law Association (in support of petitioners)
Brief amici curiae of Accenture and Pitney Bowes Inc (in support of petitioners)
Brief amicus curiae of American Intellectual Property Law Association (in support of petitioners)
Brief amicus curiae of Franklin Pierce Law Center (in support of petitioners)
Brief amicus curiae of Medistem Inc (in support of petitioners)
Brief amicus curiae of Koninklijke Philips Electronics N.V (in support of petitioners)
Brief amicus curiae of John P. Sutton (in support of petitioners)
Brief amicus curiae of Borland Software Corporation (in support of petitioners)