IP News

Congress Examines Ban on Patenting Human Organisms

Under a bill approved by the House of Representatives, the USPTO would be prohibited from issuing patents on human organisms. The provision would allow the USPTO to refuse to grant any application containing a claim that encompasses “any member of the species Homo sapiens at any stage of development.” The bill would codify existing USPTO rules regarding human organisms, but the ban would not interfere with stem cell research. Patents for cells, tissue and other biological products would not be affected, nor would the bill prevent patents for methods of creating biological products. Opponents of the bill argue that the provision would cripple research into therapeutic cloning and that the bill is unnecessary given the USPTO's policy on denying patents on subject matter encompassing human beings. The bill was approved in the House on Dec. 8, 2003 and awaits a vote in the Senate. See, e.g., www.bio.org.

EU Court Confirms that Sounds Can Be Registered Trademarks

The European Court of Justice (ECJ), the European Union's highest legal body, ruled that musical sounds may be registered as trademarks. However, the representation of the sound to be used as a trademark must be “clear, precise, self-contained, easily accessible, intelligible, durable and objective such as a musical stave.” The ruling stemmed from a case where two parties were using the first nine notes of Beethoven's Fnr Elise and a rooster's crow to identify services. Shield Mark registered the sounds as trademarks in Holland and sued Joost Kist, a Dutch communications consultant, for trademark infringement. The Dutch court turned to the ECJ to determine if EU trademark law permits sounds to be registered as trademarks. The ECJ ruled that Fnr Elise could be registered because the tune could be graphically illustrated as musical notes, and everyone would be able to understand the visual reference. The description of a crowing rooster, however, cock-a-doodle-do (or Kukelekuuuuu in Dutch) was held to be insufficiently clear to meet the requirements for a trademark.

SDNY Lifts MPAA Ban on Screener Videos

Chief Judge Michael B. Mukasey of the U.S. District Court Southern District of New York ruled on Dec. 8, 2003 that the Motion Picture Association of America's (MPAA) ban on sending screener videos to critics violated antitrust laws. Citing the piracy of the movies as justification for the ban, the MPAA imposed a ban on all movies sent to critics and award voters for awards consideration. Several independent film studios sued the MPAA under antitrust laws arguing that the ban would hurt the independent film business, which is heavily reliant on critics and awards to provide publicity to its movies.

The judge ruled that the MPAA's testimony corroborated plaintiffs' claims that the ban is anticompetitive. The judge cited the MPAA's president's testimony, which stated that the ban had to be applied to all studios or else some independent would send out screeners to gain monetary advantage, as proof that the ban would hurt the independent film business. The MPAA argued that the ban was enacted to prevent copyright piracy, but Judge Mukasey ruled that this purpose did not outweigh the harm the ban caused to independent films. Further, the judge stated that the MPAA should have allowed each studio to develop its own policy. The judge issued a preliminary injunction against the ban, and the MPAA plans to appeal.

Federal Circuit Extends Inequitable Conduct Test Into Small Entity Status Inquiries

In Ulead Sys. Inc. v. Lex Computer & Mgt. Corp, 2003 U.S. App. LEXIS 24718 (Fed. Cir. 2003), the Federal Circuit held that the test for inequitable conduct during the prosecution of a patent was applicable to assertions of small entity status. The inequitable conduct test, which requires a balancing of intent to deceive and materiality, can render a patent unenforceable. The case turned on whether a patentee exhibited an intent to deceive when it incorrectly asserted small entity status and paid the reduced maintenance fees accorded to small entities. In order to be considered a small entity, a patentee must comply with the Small Business Administration's rules for a small entity. One requirement is that a large entity cannot have any rights in the invention, including a license. While the patentee in this case correctly asserted small entity status with its first maintenance payment, the assertion was incorrect on the following payments because the patentee had licensed the patent to several large entities in the interim.

USPTO regulations characterize fraudulent attempts to establish small entity status as fraud on the USPTO ' an offense that could hold a patent unenforceable. The court ruled that the standard promulgated by the USPTO was not different from the standards that had developed in the court for assessing inequitable conduct during patent prosecution. In applying the inequitable conduct test, the court held that there was no real question as to materiality, but that there was a genuine issue of fact associated with the patentee's intent to deceive. Both the patentee's president and its patent attorney provided testimony that the assertion of small entity status was innocent error. While the patentee's president was a real estate attorney and had unsuccessfully sat for the patent bar twice, he testified that he was not aware that providing a license to a large entity constituted having rights in the invention. The patent attorney testified that since he was not directly involved with the licensing of the patents, he was not aware the patents were licensed to a large entity. The court held that this testimony presented an issue of fact as to whether there was an intent to deceive and vacated the district court's finding of inequitable conduct.

Congress Examines Ban on Patenting Human Organisms

Under a bill approved by the House of Representatives, the USPTO would be prohibited from issuing patents on human organisms. The provision would allow the USPTO to refuse to grant any application containing a claim that encompasses “any member of the species Homo sapiens at any stage of development.” The bill would codify existing USPTO rules regarding human organisms, but the ban would not interfere with stem cell research. Patents for cells, tissue and other biological products would not be affected, nor would the bill prevent patents for methods of creating biological products. Opponents of the bill argue that the provision would cripple research into therapeutic cloning and that the bill is unnecessary given the USPTO's policy on denying patents on subject matter encompassing human beings. The bill was approved in the House on Dec. 8, 2003 and awaits a vote in the Senate. See, e.g., www.bio.org.

EU Court Confirms that Sounds Can Be Registered Trademarks

The European Court of Justice (ECJ), the European Union's highest legal body, ruled that musical sounds may be registered as trademarks. However, the representation of the sound to be used as a trademark must be “clear, precise, self-contained, easily accessible, intelligible, durable and objective such as a musical stave.” The ruling stemmed from a case where two parties were using the first nine notes of Beethoven's Fnr Elise and a rooster's crow to identify services. Shield Mark registered the sounds as trademarks in Holland and sued Joost Kist, a Dutch communications consultant, for trademark infringement. The Dutch court turned to the ECJ to determine if EU trademark law permits sounds to be registered as trademarks. The ECJ ruled that Fnr Elise could be registered because the tune could be graphically illustrated as musical notes, and everyone would be able to understand the visual reference. The description of a crowing rooster, however, cock-a-doodle-do (or Kukelekuuuuu in Dutch) was held to be insufficiently clear to meet the requirements for a trademark.

SDNY Lifts MPAA Ban on Screener Videos

Chief Judge Michael B. Mukasey of the U.S. District Court Southern District of New York ruled on Dec. 8, 2003 that the Motion Picture Association of America's (MPAA) ban on sending screener videos to critics violated antitrust laws. Citing the piracy of the movies as justification for the ban, the MPAA imposed a ban on all movies sent to critics and award voters for awards consideration. Several independent film studios sued the MPAA under antitrust laws arguing that the ban would hurt the independent film business, which is heavily reliant on critics and awards to provide publicity to its movies.

The judge ruled that the MPAA's testimony corroborated plaintiffs' claims that the ban is anticompetitive. The judge cited the MPAA's president's testimony, which stated that the ban had to be applied to all studios or else some independent would send out screeners to gain monetary advantage, as proof that the ban would hurt the independent film business. The MPAA argued that the ban was enacted to prevent copyright piracy, but Judge Mukasey ruled that this purpose did not outweigh the harm the ban caused to independent films. Further, the judge stated that the MPAA should have allowed each studio to develop its own policy. The judge issued a preliminary injunction against the ban, and the MPAA plans to appeal.

Federal Circuit Extends Inequitable Conduct Test Into Small Entity Status Inquiries

In Ulead Sys. Inc. v. Lex Computer & Mgt. Corp, 2003 U.S. App. LEXIS 24718 (Fed. Cir. 2003), the Federal Circuit held that the test for inequitable conduct during the prosecution of a patent was applicable to assertions of small entity status. The inequitable conduct test, which requires a balancing of intent to deceive and materiality, can render a patent unenforceable. The case turned on whether a patentee exhibited an intent to deceive when it incorrectly asserted small entity status and paid the reduced maintenance fees accorded to small entities. In order to be considered a small entity, a patentee must comply with the Small Business Administration's rules for a small entity. One requirement is that a large entity cannot have any rights in the invention, including a license. While the patentee in this case correctly asserted small entity status with its first maintenance payment, the assertion was incorrect on the following payments because the patentee had licensed the patent to several large entities in the interim.

USPTO regulations characterize fraudulent attempts to establish small entity status as fraud on the USPTO ' an offense that could hold a patent unenforceable. The court ruled that the standard promulgated by the USPTO was not different from the standards that had developed in the court for assessing inequitable conduct during patent prosecution. In applying the inequitable conduct test, the court held that there was no real question as to materiality, but that there was a genuine issue of fact associated with the patentee's intent to deceive. Both the patentee's president and its patent attorney provided testimony that the assertion of small entity status was innocent error. While the patentee's president was a real estate attorney and had unsuccessfully sat for the patent bar twice, he testified that he was not aware that providing a license to a large entity constituted having rights in the invention. The patent attorney testified that since he was not directly involved with the licensing of the patents, he was not aware the patents were licensed to a large entity. The court held that this testimony presented an issue of fact as to whether there was an intent to deceive and vacated the district court's finding of inequitable conduct.