Monthly Archives: April 2016

Guidance: Examining patent applications for medical inventions

Updated: HTML publication added.

This guide covers:

  • basic principles
  • methods of treatment or diagnosis
  • therapy
  • surgery
  • diagnosis
  • multi-step methods involving a surgical, therapeutic or diagnostic step
  • apparatus for surgery, therapy or diagnosis
  • first medical use
  • second medical use
  • claims to pharmaceutical compositions
  • index of course cases and IPO decisions
  • index of European Patent Office decisions

Source: UK IPO News

Another unsuccessful public policy challenge to an arbitrator’s award

The City of Cleveland terminated the employment of a police officer for her essentially undisputed actions of stabbing a romantic partner.

 Grievant had been dating and, for a time, living with the partner. He had a criminal history of convictions for a number of offenses including drug possession, sexual battery, attempted kidnapping and  gross sexual imposition. On March 12, 2012 the two engaged in an argument and grievant, while intoxicated, stabbed the partner several times and fled the scene. She was found in her vehicle with a cord that was suspended from the ceiling of the car wrapped around her neck. Grievant was arrested and charged with felonious assault. She was subsequently charged with a reduced offense and sentenced to county jail for six months. The sentence was suspended but her employment was terminated.

In an award (discussed here) Arbitrator Paul Gerhart ordered her reinstatement. He concluded that while grievant had engaged in “particularly egregious” conduct the temination was not for just cause. Arbitrator Gerhart relied on evidence that other officers who had engaged in arguably similar behavior had not been terminated and found that this evidence of disparate treatment undermined the City’s case. He noted also a number of mitigating factors and reinstated her (without back pay) subject to her refraining from alcohol  and her compliance with any requirements imposed by the City’s Employee Assistance Program.

The City sought to set aside the award but the trial court refused to do so. The Court of Appeals of Ohio has now affirmed that decision and upheld the award. City of Cleveland v. Cleveland Police Patrolmen’s Association. The City claimed that the award was contrary to public policy, a claim that the Court quickly rejected. The Court observed that the City had failed to state a well defined public policy argument and noted:

The arbitrator acted within his discretion, and the City did not effectively argue how his decision is in conflict with public policy. The City only argues that the public should be able to have the confidence in police officers and that officers should hold themselves to the highest ethical standard. However, there are many cases where police officers have not held themselves to such a high standard, and yet they were not terminated from their jobs. 

The Court also rejected the City’s claims that the arbitrator improperly required it to use progressive discipline and did not issue a “final” award because he essentially deferred to the City’s Employee Assistance Program to decide what, if any, continuing counseling was appropriate.
Source: ADR

Guidance: Copyright protection of industrially manufactured artistic works

Updated: Repeal of section 52 of the Copyright, Designs and Patents Act 1988: Guidance for affected individuals, organisations and businesses document updated.

The repeal of section 52 Copyright, Designs and Patents Act 1988 has raised questions for a range of groups, including the design sector, publishing, photography and furniture retail. This guidance will help businesses, organisations and individuals think about whether they are affected, what action they should take in relation to the transitional arrangements the government has put in place, and what copyright exceptions might help them continue to carry out their business.

Source: UK IPO News

Form: Application to register a design which registration was deferred

Updated: Amended in light of 1 October 2016 fee changes.

You must apply for your design to be registered within one year of applying to register the design. If you do not do so, we will treat your application as abandoned.

You need only complete this form if you did not consent to publication in the original application form.

Fee sheet

Fee payable forms must be accompanied with a completed fee sheet.

Cost

£40 per design

Source: UK IPO News

Detailed guide: Licensing bodies and collective management organisations

Updated: Independent Music Publishers’ E-Licensing (IMPEL) and The Mechanical Copyright Protection Society (MCPS) added.

Overview

If you would like to use copyright material, you usually need to get permission from the rights holder to do so. Sometimes this can be obtained directly from the rights holder, but more often it is granted in the form of a licence from a licensing body. A licensing body is a broad term used to describe any organisation which offers licences for the use of copyright work.

What is a collective management organisation

A Collective Management Organisation (CMO) is a type of licensing body which grants rights on behalf of multiple rights holders in a single (‘blanket’) licence for a single payment. Generally speaking, rights holders will join a CMO as members and instruct it to license rights on their behalf. The CMO charges a fee for the licence, from which it deducts an administrative charge before distributing the remainder as royalties. They are typically not for profit organisations and are owned and controlled by their members, the right holders.

How are collective management organisations regulated

The conduct of UK CMOs is governed by the Collective Management of Copyright (EU Directive) Regulations 2016. These Regulations implement a piece of EU legislation (the Collective Rights Management (“CRM”) Directive, 2014/26/EU) into UK law.

The CRM Directive

The CRM Directive aims to fulfil the following objectives:

  • to modernise and improve CMO governance, financial management and transparency; in particular, ensuring right holders have more say in the decision making process and receive royalty payments that are accurate and on time
  • promote a level playing field for multi-territorial licensing of online music
  • to help create innovative and dynamic licensing structures that encourage the development of legitimate online music services

Monitoring compliance of the CRM Directive

The CRM Directive requires each member state to nominate a National Competent Authority (NCA) which will be responsible for monitoring and enforcing compliance with the Directive’s provisions. The NCA functions in the UK will be undertaken through a unit in the Intellectual Property Office (IPO). For more information please visit how the IPO regulates licensing bodies.

CMO’s in the UK

Copyright works can come in a number of different forms, for example books, newspapers, pictures or music. There is usually one CMO per sector which may be able to offer a collective licence.

Music

PRS for Music and Phonographic Performance Limited (PPL)

These are the 2 CMOs that operate in the music sector. PRS manages the rights of songwriters, composers and publishers while PPL manages the rights of the record producers and the performers. As all these parties can have rights in a single piece of music, you will often need a licence from both PPL and PRS to get complete copyright coverage if you would like to play recorded music (eg records, CDs, jukebox or the radio) in a public space. A public space is usually one that is not domestic or private, for example a pub, club, shop, workplace or village hall. You would usually only need a licence from PRS if you would like to allow live music to be played at a public venue.

Eos (The Broadcasting Rights Agency)

Eos is the Broadcasting Rights Agency that serves the music industry in Wales.

Printed material

The CLA licenses on behalf of the Publishers Licensing Society, the Authors’ Licensing Society and (in certain cases) the Design and Artists Collecting Society. You may need a licence from the CLA if, for example, you wish to photocopy, scan or re-use content from magazines, books, journals and electronic and online publications.

Publishers Licensing Society (PLS)

The PLS use the Copyright Licensing Agency (CLA) and the NLA Media Access to manage collective licensing for publishers. PLS distribute the royalties they receive from the CLA and NLA to publishers who have signed up with them. While PLS do not offer any collective licences themselves, they may be able to assist if you are looking to use their members’ works in a way not covered by an existing collective licence.

Authors Licensing and Collecting Society (ALCS)

The ALCS use the CLA to license the rights of its author members. They are responsible for distributing the royalties from the CLA to their members. They do not offer any collective licences themselves but may be able to assist if you are looking to use their members’ works in a way not covered by an existing collective licence.

NLA Media Access

You may need a licence from the NLA if you wish to make a copy of an article published in a newspaper or magazine either in print or online and make this material available to other people either in a leaflet or on a website.

Performers’ rights

British Equity Collecting Society (BECS)

The performers’ union Equity established BECSin 1998. BECS is a CMO whose main purpose is to enforce its members’ statutory rights and collect revenue from the compulsory collective administration of rights within the UK and in other EU Member States.

Artistic works and images

You may need a licence from DACS if you wish to use an image of an artwork in a publication, advert, book or on a website. DACS uses the CLA to do the licensing of images in books and other publications.

Artists Collecting Society (ACS)

ACS deals with the collection of the Artist’s Resale Right and copyright on behalf of artists and artists’ estates in the UK and EU.

Recording of television programmes by educational institutions

Educational Recording Agency (ERA)

You may need a licence from ERA if you are a school or an educational establishment in the Further and Higher Education sectors and if you wish to store and/or use audio or audio-visual clips or recordings sourced from radio or television broadcasts, for non-commercial educational purposes.

Directors UK

Directors UK is the professional association of directors working with the moving image in the UK.

If you think you need a licence, you should contact the relevant CMO which will be able to confirm exactly what your licensing requirements are.

Other licensing bodies

Other examples of licensing bodies which are not strictly CMOs, but which can offer collective licences are detailed below.

Films

Motion Picture Licensing Corporation (MPLC)

You may need a licence from the MPLC if you wish to show one of their member’s films in a public forum for example in film clubs, libraries, hospitals and seminars.

Filmbank Media

You may need a licence from Filmbank if you wish to show one of their member’s films in a public forum for example in film clubs, libraries, hospitals and seminars.

Use of works in churches or Christian worship

You may need a licence from the CCLI if you wish to copy text from hymn books for use in worship. They also offer a film licence to cover the showing of films during worship or in church clubs. CCLI also act an agent for PRS and PPL for churches that use recorded music outside of worship for example in a coffee shop or club.

Music

Soundreef

You may need a licence from Soundreef if you wish to play one of their member’s music in stores or if you want to perform their music.

Independent Music Publishers’ E-Licensing (IMPEL)

IMPEL is a collective of independent music publishers that have appointed MCPS to license and administer the online mechanical rights in their Anglo-American repertoire on their behalf. IMPEL became a limited company in January 2015 and is owned by the MPA.

The MCPS is a licensing body which manages mechanical reproduction, distribution, import and synchronisation rights on behalf of music publishers and songwriters.

Printed material

Printed Music Licensing Ltd (PMLL)

You may need a licence from PMLL if you are a school who wishes to copy any sheet music.

If you are unhappy about the price or terms and conditions contained within a licence offered by a CMO or other licensing body, you may be able to appeal to the Copyright Tribunal. The Tribunal is a court which specialises in deciding disputes over the reasonableness of the price of a licence and its terms and conditions.

Source: UK IPO News

USPTO Launches Two New Online Fee Payment Tools

Guest Blog by Chief Financial Officer Tony Scardino

For several years, the USPTO has been making significant progress in modernizing its information technology (IT) infrastructure and tools for both employees and the public. Our financial tools are no exception, and I’m excited to announce that on April 9, the USPTO is launching two new online fee payment tools to the public:  Financial Manager and the Patent Maintenance Fees Storefront. Watch the short video overviews of Financial Manager and the Patent Maintenance Fees Storefront.

These new tools incorporate feedback from customers that we received through outreach efforts, including interviews, surveys, and user design sessions. The result for users is increased efficiency, better information, and a workflow that is better streamlined to integrate with users’ business processes. Here are some of the tools’ new features:

  • For the first time, customers will have streamlined uspto.gov accounts. To access Financial Manager, customers will easily create their own uspto.gov account. Then once signed in to their account, customers will also have access to advanced features in the Patent Maintenance Fees Storefront, like bulk file payments and a virtual shopping cart.
  • In Financial Manager, customers will be able to store and manage their payment methods online; assign secure user permissions, allowing others to access and help manage payment methods; receive administrative email notifications; and create transaction reports, including monthly deposit account statements. Each individual in an organization will need their own uspto.gov account to access or help manage a stored payment method. 
  • In the Patent Maintenance Fees Storefront, customers will be able to retrieve patent maintenance fee information (including payment window dates for up to 10 patents at once); upload bulk files to pay any number of patent maintenance fees at once; check out more quickly using their stored payment methods; add fees to an online “shopping cart” and save them for payment later that day; receive an itemized receipt for each payment; and download a statement for each patent.
  • In the months ahead, we’ll be expanding the stored payment methods feature to pay for other patent, trademark, and USPTO service fees.

Here are some additional changes to be aware of:

  • These new tools will replace the current Office of Finance Online Shopping Page and Financial Profile. Once the new tools go live, the old web pages will no longer be available.
  • Similarly, anyone attempting to pay a patent maintenance fee online will need to use the new Patent Maintenance Fees Storefront.
  • Deposit accounts are “going green.” Deposit account holders will now manage all deposit account activities online using the new Financial Manager. Monthly statements are also going paperless. Deposit account holders will be able to access their statements online at any time in Financial Manager, and the USPTO will no longer be mailing paper statements. 
  • Finally, for deposit account holders with multiple users in their organization, each user must create their own uspto.gov account in order to be able to access the deposit account.

We will be working with our current customers to ensure a smooth transition to these new tools. This includes implementing a temporary transition period to allow customers to adjust to the new way of managing financial transactions and paying fees at the USPTO.

Customers currently using a deposit account or EFT to pay fees at the USPTO will still be able to do so by entering their current deposit account or EFT credentials (i.e. deposit account access code or EFT profile name and password) immediately after the release of Financial Manager. After the temporary transition period, customers will need to store and manage deposit accounts and/or EFTs in Financial Manager, and only users who have been granted “Fee Payer” permissions for the payment method will be able to use them for payment. The transition timeline will be posted on the Financial Manager page of the USPTO website when Financial Manager goes live. In the meantime, customers can refer to the Fee Payment Transition Resources section of the USPTO website to find additional information on the payment method migration.

We are very excited about bringing these new financial and fee payment tools to the public, and we’re confident that they will enhance our customers’ experience of doing business with the USPTO. If you have additional questions, please visit the FAQ page for Financial Manager, or the FAQ page for the Patent Maintenance Fees Storefront. You can also email us at fpng@uspto.gov. We rely on customer feedback to drive our plans for future improvements.

Source: USPTO

Crowdsourcing of Patent Search

ArticleOnePartners, Patella, and IPQuest are few of  those crowdsourcing platform for Patent Search, who are providing very successful medium for the companies, the patent owners, by enabling them to avail the patent search services at a fixed price, with the availability of dead cheap patent searchers and scholars.

Whether these patent studies are efficient to the patent owners? Are they transparent enough to pay back the participating crowdsourcing members. While, it might be a reason that Patent Attorneys and the Patent Agents pay hefty price for their Patent Research and services in the US market. Patent Owners tend to look out for alternatives at cheaper cost.

But are they worth enough to protect the real intellectual rights, when technology knowledge is searched in public for the specific prior art, invalidation, or the patentability search.?  On the other hand, Whether the members from the countries where large pool of technical resources, who participate in such crowdsourcing projects really benefited ?

I think answer to both the questions might comes as NO, because, disclosing projects in public domain could indirectly educate the competitors about what could be next from the project results. Similarly, though  the participating members work very hard, and long hours to submit their findings, and even if they are  ranked high in terms of relevancy, their efforts may go waste, just because the patent owner might reject all the submissions as irrelevant. Resulting, fake disclosures of award winners and paying negligible to the actual winners.

Though it is a very good platform to work on such search studies, the nativity of the transparency in such platforms are questionable, and are open to lot of criticism.

In work, a patent study to read full text, referring drawing,  and full of review of PDF document  requires at least an hour to read 50+ patent documents. So, the list of 5000+ patents can take anywhere between 100+ hours , say about a week or 10 working days, depending on the subject and technical depth.

For such patent search work,  a patent analyst’s charges may vary from minimum of 20 USD per hour to maximum of 100 USD per hour, which would be proportionate to the subject and experience. It also differs by the type of search and intelligence analysis.

Though such crowd sourcing platform is a good model, free to participate policies attracts many efficient patent professionals, It may be one sided opportunity for the analysts and a great opportunity for the patent owners, who use these platforms in brining out more participants and closing the patent study with efficient results.

However, level of transparency followed by these crowd sourcing companies may be questionable? Virtually, killing thousands of hours of intellectual brains & resource hours. Yes, it may be a lucky draw for the winning contestant, but other 100+ participants may end up with nothing, may be the study results could be having just 1% difference to the winner. Yes, even if such model and concept is good , there shall be some remedies for searchers in not wasting duplicate time.
So my question here is that…. is there a lack of transparency in the number of submissions, the report of winning studies and the legitimacy of actual winners?

Platform allows to submit duplicate patents

As the contest or a project study of patent is announced, many searchers starts submitting the relevant patents, while they submit the patents, there is a possibility that many other researchers may submit the same patent, as all many users would be using the same of the kind of database sources & tools.

When submission is being done, the platform should allow or restrict or even to publish the list of patents already submitted as and when submitted, to inform the other searchers, about already submitted patents. So, such information can save thousands of hours of the searchers, the time management and efficiency can be utilized on other patent studies.

Platform does not disclose the winning studies.  Same like, when the contest winner is announced, it would be a transparent model, if the winning patent is disclosed to the other participants, also legitimacy of patent winners, real photograph and real profile. Moreover, studies listed on those platforms becomes open to public, can also result in breaking of IP secrecy, as well publicize  the motives of the study and the trend, at the cost of the searchers!.