The reference International Copyright by Paul Goldstein and Bernt Hugenholtz (2nd Edition, Oxford University Press, USA; 592 pages) is a book for professionals involved with international intellectual property transactions or litigation.  This volume covers all areas of international copyright law and practice from the Berne Convention to the TRIPs Agreement.

The first half of the book is dedicated to the principles of international copyright.  There is a discussion of the rationales for copyright and the legal traditions that created the framework for more modern laws.  The rules on ownership of rights developed out of moral rights and a basic sense of fairness but also for a larger purpose:

“Apart from their philosophical underpinnings, there is worldwide consensus that copyright and author’s rights  advance the important goals of authorial autonomy and cultural diversity.  The grant to creators of exclusive rights in their rights of authorship opens the door not only to reaping revenues from the work but in many cases to earning a livelihood.  The universal rule that copyright protects expression but not ideas opens a second door, stimulating the production and dissemination of diverse cultural expression.”

While book covers various treaties and international copyright agreements, the book weaves together these agreements and how they relate to territoriality, national treatment of copyright, subject matter jurisdiction and conflict of laws.

The second half of the book is a complete overview of substantive copyright law and neighboring rights.  A detailed discussion if provided for various classes of copyrightable subject matter, authorship, ownership, term of protection, economic and moral rights as well as exemptions, statutory licenses and limitations on exclusive rights.

There is also a section on copyright enforcement and remedies for infringement”

“Coercive remedies are an essential weapon in a copyright owner’s litigation arsenal.  In many, if not most, cases, a court order enjoining further infringement will better to serve the right holder than ex post compensation for damages following a (sometimes protracted) judicial proceeding on the merits of a case.  Coercive remedies range from temporary injunctions, to measures to preserve evidence granted in ad interim procedures, to more permanent remedies issued as part of a final judgment in a case.”

We recommended this book for anyone interested in international copyright law and practice.

About the Authors

Paul Goldstein is the author of an influential four-volume treatise on U.S. copyright law and a one-volume treatise on international copyright law, as well as leading casebooks on intellectual property and international intellectual property. He has authored seven other books including two novels devoted to intellectual property themes, Errors and Omissions and A Patent Lie. Professor Goldstein currently serves as of counsel at Morrison & Foerster in their intellectual property group and a professor at the Stanford Law School.

Bernt Hugenholtz is Professor of Intellectual Property Law and Director of the Institute for Information Law of the University of Amsterdam (IViR). He has written numerous books, studies and articles on a variety of topics involving copyright, information technology, new media and the Internet.

International Copyright by Paul Goldstein and Bernt Hugenholtz (2nd Edition, Oxford University Press, USA; 592 pages) is available through Amazon.

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Just before Valentine’s Day, Harlequin Books is hoping to obtain a patent on the very foundation of the romantic holiday: the kiss.

The book publisher announced it has submitted a patent application for the “Essential Romantic Kiss” to the United States Patent and Trademark Office.  The application serial number is 61/438360, indicating it was filed as a provisional application.

The Harlequin kiss patent application describes its proposed kiss as:

A method is provided for two individuals to reciprocate their romantic feelings toward one another.

During Step 1 (“The Prelude”), the kissers deploy the muscle around the mouth (the orbicularis oris, or “kissing muscle”) to shape their lips in a manner conducive to kissing (i.e. to “pucker the lips”, or “pucker up”).

In Step 2 (“The Approach”), they bring their faces into close proximity and tilt their head in opposite directions.

During Step 3 (“The Seal”), the lips touch with varying degrees of pressure and intensity. The lips remain attached for an indeterminate period of time.

While Step 3 may be considered as completing the method or “sealing” The Kiss, there is an optional Step 4 (“The Embrace”) for those kissers who are caught up in the passion of the moment and thus feel compelled to go beyond Steps 1, 2 and 3.

It involves deploying additional body parts, such as hands or arms, on the neck, shoulders or back of the other kisser, thereby drawing them into an interlocked position.

To find out more about the kiss patent application, I spoke with Michelle Renaud, head of the Preservation of the Kiss office, a “division of Harlequin that exists to celebrate all things related to kissing.”

Michelle Renaud: I’m thrilled to be talking with you.

Patent Baristas: Well, I have to admit I was surprised to hear about the application so I went to your website and downloaded a copy of your patent application.

MR: Yes.

PB: I understand it is a provisional so it doesn’t actually have claims in it.  But, it was fairly complete with drawings and included the various steps to the method.

MR: Oh, great.  I’m glad that you were able to take the time to look at it.  That’s fabulous.

PB: Yeah.  So, I don’t want to go through the legal aspects of it but I’d like to just get the background information on how this came about.

MR: Sure.  Definitely.  Harlequin.  We every year launch our annual romance report.  And that is something that we have been doing for about 22 years now.  It’s usually a magazine that we send out to the media around Valentine’s Day.  And the one moment that Harlequin knows best.  It really is the kiss. That moment’s really the cornerstone of all romance, and really the turning point of a really good story.  At Harlequin, we’ve been doing this for over 60 years, which is really exciting.  We thought, by focusing on the kiss, you know, we would be able to create some excitement and create this website that you were on, which is patentyourkiss.com.

PB: Okay.

MR: In doing that, we thought we were looking at a patent.  It really is kind of fun, you know, a tongue in cheek way to kind of stake ownership of that moment but yet share it with the world and really have some fun with it.  That is what we did through the Harlequin office for the preservation of the kiss and that was kind of our main idea for the program.

PB: Basically, Harlequin has been, we’ll say, in the kiss business for 60 years.

MR: Yes

MR: For over 60 years in North America and everything we do is about romance.  We publish 110 books a month.

PB: Wow.

MR: The majority of those books are focused around romance, and they all have that kiss moment.  We feel that we really know that moment better than anyone else in the world.

PB: Well, I have to admit that I would never have guessed that it was 110 a month.

MR: Yes.

PB: I have a feeling that your target audience is not men.

MR: We do have a lot of men that read our books.  Absolutely.  And they’re probably picking up some really good pointers on how to really treat their girlfriends or wives.

PB: So maybe they just don’t admit it.

MR: Exactly.

MR: Our target audience is definitely women.  And our goal really is to provide really great reading entertainment for women.

PB: Well, I wanted to talk about “the essential romantic kiss.”

MR: Yes.

PB: Obviously, a method.

MR: Yes.  A method.

PB: What I’d like to ask is:  What is new?  You know, for the essential romantic kiss over say all the kisses before like with Katherine Hepburn.

MR: Definitely! I know where you’re coming from.

PB: All those iconic kisses.

MR: Yes, yes.  And we did look at a number of iconic kisses.  What we looked at was the kind of the essential romantic kiss.  It’s that everyday form of affection.  We’re thinking that the kiss has become this kind of mundane sort of sign of affection.  We really wanted to bring the romance back to kissing.  And I think that was really the inspiration behind the patent application.

PB: Okay.  I can understand the impetus, let’s say.  But what I was getting at was:  What part do you think is new?

MR: What do I think is new about this kiss moment?

PB: Yes.

MR: I’m not really quite sure if there is anything that is new.  I’m not sure I may be able to answer that.

PB: Okay.

MR: But I think that if we look at Harlequin, and we look at that kind of kiss moment that’s in our book.  I think that’s where we drew the inspiration from.  I don’t think that we’re trying to say that there is a new kiss out there or what not.  But, you know, it really is kind of that essential kiss and how Harlequin feels that it should take place.

PB: I like how you use scientific terms for the kissing muscle.  Like the orbicularis oris for the mouth.  That was very nice.  And laid it out into the various steps.

MR: Yes.  It was fun.  It was really fun to work on.

PB: So, I would take it that you are probably not going to sue your readers if they actually perform this method.

MR: No.  No.  Absolutely not.  I think our intention is to really, like I said, really bring the romance back to kissing.  And, you know, inspire our readers to kiss more.  Maybe, you know, replicate the kisses that they are reading about.  And really have fun with it.  That was definitely our intention.

PB: I can understand where you are coming from.  I think human touch, in general, is quite important.  Whether it is a parent with a baby or your friends or your significant other. I think there’s been a lot of proven benefits to the whole release of oxytocin.  Right?

MR: I agree.

PB: So, what do you think is next?

MR: You know, right now we are having so much fun watching people have so much fun on our website.  I think there’s almost a thousand kisses in there now.

PB: Wow.

MR: But we’re really seeing that people are liking the tool that we have on our website.  They’re interacting with it and really having an appreciate for, for not only the program, but you know, just being inspired to kind of have that kissing moment around Valentine’s Day.  I think it’s great to see the reaction from readers, even new readers that we’re engaging with the Harlequin brand.

PB: Okay.

MR: So, everything has been great so far.

PB: Well, so I guess you can say that if I’m terming this correctly, the kiss creator.  Sort of proves that new kisses can be developed.  You know.

MR: Exactly.  You know, we’re seeing people go on our website that are recreating their kiss moment be it, you know, on a beach or in Paris or maybe even, you know, dreaming about a kiss moment with, you know, a possible significant other or even a celebrity.  So, you know, definitely lots of really unique kisses and their unique names.  And, it’s been a lot of fun.

PB: Can I ask just one last question:  Are you the inventor on this patent application?

MR: Yes.

PB: How long did it take to come up with the essential romantic kiss.

MR: We actually have been working on this program for several months and every year around Valentine’s Day, like I said, we launch it.  We usually close out kind of the big chunks of the program by the end of March, and then we start thinking about the following year.  So, it’s definitely taken a long time to really get this right and just get the feeling right when it comes to the patent and really to insure that people understood where we were coming from.  We knew that that was really important and something that we took very seriously.

PB: Well, I really appreciate your time.

MR: Okay.  Thank you.

Harlequin has created an online interactive Kiss Creation tool, which allows people to create their own kissing styles.  Renaud said over 1000 kisses have been submitted since the site’s launch, including one by Kim Kardashian labeled “The Kim Kardashian Classic Sneak Kiss!”

I prefer something more like Alfred Eisenstaedt’s famed photograph of “The Kiss”, which captures an unknown sailor planting a surprise kiss on Nurse Edith Shain in Times Square on VJ Day, August 14th, 1945.

Michelle Renaud is Senior Public Relations Manager at Harlequin Enterprises Limited in Toronto, Canada

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Keeping up with intellectual property today means taking a more global perspective.  This is especially true in countries emerging as large producers of intellectual property.  The SiNApSE blog features a wealth of information on the patents and other intellectual property in India.  This blog, written by a team of ten IP professional acting as contributors, provides good breadth of coverage.

A recent post takes the reader through the history of copyright law as it developed from a dispute over the ownership of the Irish manuscript of the Cathach through international and regional agreements such as the Berne Convention and the European copyright directives.

The Cathach is the oldest extant Irish manuscript of the Psalter. It contains a Vulgate version of Psalms XXX (10) to CV (13) with an interpretative rubric or heading before each psalm. It is traditionally ascribed to Saint Columba as the copy, made at night in haste by a miraculous light, of a Psalter lent to Columba by St. Finnian. A dispute arose about the ownership of the copy and King Diarmait Mac Cerbhaill gave the judgment “To every cow belongs her calf; therefore to every book belongs its copy.”

The need for enforceable copyright laws came in real force in the 15th and 16th century after the invention of printing methods.

Subsequently, government started issuing licenses for printing with the republic of Venice being the first to grant privilege to print books. In 1518, the first copyright privilege was granted in England. It was issued to Richard Pynson, King’s Printer, the successor to William Caxton. The privilege gave a monopoly for a term of only two years!

SiNApSE is an initiative of Brain LeagueIP Services. It started as an endeavor towards creating awareness about IP and has metamorphosed into a platform for IP professionals, academicians and policy makers for discussions, debates that serve as guidelines on emerging IP issues, thereby contributing to an innovative space for IP discourse.

We recommend you add them to your reading list.

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The White House issued an Executive Order establishing two Intellectual Property advisory committees, including the formation of an inter-agency Senior Intellectual Property Enforcement Advisory Committee. The senior advisory committee comprises cabinet level officials from State, Treasury, Justice, Agriculture, Commerce, Health and Human Services, Homeland Security, Office of Management and Budget, as well as, the United States Trade Representative.

The mission of the Senior Advisory Committee is to advise the Coordinator and facilitate the formation and implementation of each Joint Strategic Plan required every 3 years under title III of the Prioritizing Resources and Organization for Intellectual Property Act of 2008 (Public Law 110-403; the PRO-IP Act).

Both committees will be chaired by the Intellectual Property Enforcement Coordinator (IPEC), Ms. Victoria Espinel.  She was appointed by President Barack Obama and confirmed by the U.S. Senate to serve in this new position created by Congress in the PRO-IP Act.

The regular (nonsenior?) Intellectual Property Enforcement Advisory Committee (Enforcement Advisory Committee), is chaired by Espinel.  The Enforcement Advisory Committee is composed of designated persons in OMB, relevant units within the Department of Justice, including the Criminal Division, the Civil Division, and the FBI; the US PTO, the ITA, and other relevant units of the Department of Commerce; the Office of the United States Trade Representative; the Department of State, the Bureau of Economic, Energy, and Business Affairs, the United States Agency for International Development and the Bureau of International Narcotics and Law Enforcement Affairs; DHS, United States Customs and Border Protection, and United States Immigration and Customs Enforcement; the FDA;  the Department of Agriculture; the Department of the Treasury; Register of Copyrights; and such other executive branch departments, agencies, or offices as the President determines to be substantially involved in the efforts of the Federal Government to combat counterfeiting and infringement.

This reminds me of a coffee mug I saw once that read:  “Meetings.  The Practical Alternative to Work.”  Here’s hoping that this is not just a lot of busywork.  We look forward to seeing how the Administration will not only work to protect protect intellectual property rights but stimulate the development of new intellectual property.

Earlier this week, in an address here at the Chamber of Commerce, President Obama stated that as Americans, “we need to out-innovate, we need to out-educate, we need to out-build our competitors. We need an economy that’s based not on what we consume and borrow from other nations, but what we make and what we sell around the world.”

The Pro-IP Act accomplishes three basic goals (1) it coordinates the federal government’s resources to protect copyrights, patents, trademarks, trade secrets and computer data through the newly created position of intellectual property enforcement coordinator (IPEC); (2) it provides increased funding to the Department of Justice (DOJ), the Federal Bureau of Investigation (FBI) and local law enforcement to investigate and prosecute IP theft; and (3) it increases civil and criminal penalties for stealing IP.

The Act gives courts discretion, at the start of a lawsuit, to order the impoundment of infringing materials, property used to make the infringing materials, and all records documenting the violations. To protect against disclosure of any confidential, proprietary, or privileged information contained in seized materials, the court must issue a protective order. The PRO-IP Act also expands existing prohibitions against importation of infringing items to now apply to exportation as well.

The PRO-IP Act significantly increases the remedies available to trademark owners in counterfeiting cases. The new range of statutory damages has been increased to $1,000 to $200,000 per counterfeit mark per type of goods sold, offered for sale or distributed. The class of persons potentially liable for treble damages and attorneys’ fees was expanded to include those who provide goods or services necessary to the commission of a violation with the intent that they be used to commit a violation.

The PRO-IP Act also expanded forfeiture provisions for criminal copyright infringement and trafficking in counterfeit goods or services. Property used in the commission of an offense, as well as property constituting or derived from proceeds obtained directly or indirectly as a result of the commission of an offense, may be ordered forfeited and destroyed. The court may also order that restitution be paid.

The PRO-IP Act prioritizes the protection of intellectual property with the creation of an Intellectual Property Enforcement Coordinator (IPEC), referred to colloquially as the “IP Czar.” Appointed by the President and confirmed by Congress, the IP Czar is charged with chairing an interagency enforcement Advisory Committee, coordinating and developing a Joint Strategic Plan against counterfeiting and infringement, and advising the President on domestic and international intellectual property enforcement policy.

The federal government will spend $429 million over the 2009-2013 period to carry out the mandates of the Act. The Act recognizes the need for additional FBI agents and DOJ attorneys to carry out its mission, and $25 million per year has been earmarked for grants to local law enforcement for the training, prevention, enforcement and prosecution of intellectual property theft and infringement crimes.

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Senators Patrick Leahy, Orrin Hatch, and Chuck Grassley introduced The Patent Reform Act of 2011, which has been placed on the Judiciary Committee’s agenda for their first executive business meeting. The provisions and language of the bill look a lot like items in the long-pending legislation that were part of a compromise that was announced last Congress.

Sen. Leahy said that the new legislation is intended to accomplish three primary goals: (1) transition to a first-to-file system; (2) improve patent quality; and (3) provide more certainty in litigation.

First-to-File System

Similar to previous patent reform bills, the Patent Reform Act of 2011 proposes to change the U.S. patent system from a first-to-invent to a first-to file system in an effort to harmonize the U.S. patent system with those of other countries. The new first-to-file system will award patents to the earliest-filed application for a claimed invention, as well as provide inventors with a one-year grace period to file an application after public disclosure of the claimed invention by the inventors.

‘‘(b) EXCEPTIONS.— ‘‘…A disclosure made 1 year or less before the effective filing date of a claimed invention shall not be prior art to the claimed invention— if the disclosure was made by the inventor or joint inventor or by another who obtained the subject matter disclosed directly or indirectly from the inventor or a joint inventor.

The current interference system in place for determining inventorship disputes will be replaced with a derivation procedure.

Patent Damages

The Act is intended to provide more certainty in damages calculations and enhanced damages.  Specifically, the Act includes a rigorous gate keeping role for the court, pursuant to which judges will assess the legal basis for the specific damages theories and jury instructions sought by the parties.  The gate keeping provisions will ensure consistency, uniformity, and fairness in the way that courts administer patent damages law.  The Act also permits a party to request, and requires a court to grant absent good cause, that the trial be sequenced such that the trier of fact decides questions of validity and infringement prior to damages.

“The court shall identify the methodologies and factors that are relevant to the determination of damages and the court or jury shall consider only those methodologies and factors relevant to making such determination.”

In addition, the Act improves the law of willfulness and enhanced damages.  It codifies the case law that holds that a defendant may only be found to have willfully infringed a patent if the plaintiff demonstrates by clear and convincing evidence that the infringer acted with objective recklessness and the objectively-defined risk was either known or so obvious that it should have been known b y the infringer.

False Marking

Similar to last year’s compromise legislation, the Patent Reform Act of 2011 also proposes to impose more restrictive requirements on who has standing to bring a claim for false marking under 35 U.S.C. § 292. Under the proposed legislation, False marking cases will only be allowed if filed by persons who have actually been harmed by the alleged misconduct. False marking cases would also include a statute of limitations that limits the time to file such cases to 10 years after the alleged misconduct or 1 year after the plaintiff in such an action became aware of the alleged misconduct.   The United States retains the ability to bring a claim for false marking and recover the up to $500 fine per article without needing to demonstrate any competitive injury due to the violation.

Post-Grant Review Procedures

The Patent Reform Act of 2011 also includes a revised “inter partes review” procedure and a new “post-grant review” procedure. The inter partes review procedure includes proposed procedural changes that are intended to shorten the review time for most reviews to 12 months and are conducted by Administrative Patent Judges.  The challenge will be heard by a panel of three Administrative Patent Judges, and its decision is appealable directly to the Federal Circuit.. Upon meeting the threshold requirement of establishing a “reasonable likelihood” of prevailing, any party may challenge the patentability of one or more of the issued claims on the basis of any patent or printed publication. The petition for review must be filed within nine months of the grant of the patent or the conclusion of any post-grant review, whichever occurs later.

An accused infringer may not seek review (1) if it has already filed a lawsuit in district court challenging the patent, or (2) more than three months after the date the accused infringer must answer, or otherwise respond to, a complaint for patent infringement filed by the patentee.

The new post-grant review procedure allows petitioners to challenge the validity of issued claims on any ground of patentability. The Act includes a “reasonably could have raised” estoppel standard, preventing a challenger from raising in court only an argument that reasonably could have been raised during an inter partes review that the challenger instituted.

Additional Provisions

Similar to the versions proposed in past years, the Patent Reform Act of 2011 also proposes changes directed to the following:

  • Allowing third parties to submit and explain prior art, and other pertinent information concerning claim construction, for consideration by the patent examiner
  • Removal of residency restrictions on Federal Circuit judges
  • Elimination of failure to disclose best mode as an infringement defense
  • Creation of a “supplemental examination” procedure to cure potential inequitable conduct
  • Fee setting authority granted to the USPTO

In addition, the Act contains a specific provision precluding the issuance of any patent claims containing subject matter directed to tax strategies.

Before you get all excited about this, don’t forget we’ve already had the Patent Reform Act of 2011, the Patent Reform Act of 2010, the Patent Reform Act of 2009, the Patent Reform Act of 2008, the Patent Reform Act of 2007

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The Ohio Academy of Science (OAS) and The Ohio State Bar Association Intellectual Property Law Section (OSBA) announced that March 1 is the deadline for Ohio inventors to apply for Ohio Patent Awards to recognize individuals or organizations and their counsel who have contributed intellectual property in the form of granted patents within Ohio.

Ohio has a rich history of innovation including the controlled, powered airplane, the automobile self-starter, the flip-top can, the vaccine for feline leukemia, and numerous other patented inventions which have had a worldwide impact.

The Ohio Patent Awards will be granted in two separate categories in 2011:

  1. the Ohio Patent Legacy Award, and
  2. the Ohio Patent Impact Awards.

The Legacy Award will be granted to a prolific and/or historic Ohio patentee-inventor in recognition of their contribution of significant intellectual property in the form of a U.S. patent or collection of U.S. patents.

Ohio Impact Awards will be granted to the Ohio inventor or organization and their counsel who have contributed new intellectual property in the form of an issued U.S. patent which has significantly impacted the state of Ohio through positive changes. Among the criteria to be examined for the Ohio Impact Awards will be significance to Ohio’s economic, social change, health benefits, or growth of new industries and/or jobs.

The patent must be a U.S. patent issued prior to March 1, 2009, and may be from a not-for-profit or for-profit corporation, government agency, an academic institution or association, or from an individual inventor residing in Ohio either on the filing date of the patent or on the date of patent issuance. The law firm or attorney that prosecuted the patent will be recognized by association with the outstanding patent. Such law firm or attorney must reside within the State of Ohio.

All applications must be mailed to The Ohio Academy of Science by the postmarked date of March 1 or submitted electronically. An online, printable application and further details are posted at www.ohiosci.org/PatentAward.pdf . Email questions to oas@iwaynet.net or call 614.488.2228.

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On March 23, 2010, after years of deliberation, President Obama was finally able to pass his monumental Health Care Reform bill. The bill was broken up into two separate bills; a Patient Protection and Affordable Care Act and a Health Care and Education Reconciliation Act. Some of the effects of the bill have already begun, while many others are still yet to come. Of course with any major reform, there are those who favor it, and those who oppose it. There are those who benefit from the law, while others lose. This time it has clearly been the Health Insurance and private health companies that have lost. This has recently become the focal argument for the Conservative-Republican base. However from a neutral standpoint, there are obvious advantages and disadvantages in the bill.

Medical Research Cutbacks

While it may seem to favor the general public, it undermines the facilities that administer this coverage. For example, private health companies and pharmacies that are seeking to invest into new medical research, have found their resources greatly diminished. In today’s new health care system, medical companies can no longer afford to put in the time on research, without suffering financial losses elsewhere. That is to say, doctors and bio-scientists cannot research cures for diseases and ailments, as efficiently as they once could. Ailments such as ovarian cancer, that may have suggested treatments such as chemotherapy, however still deliver inconsistent results. Doctors that are looking to improve these treatments need to be able to invest time into researching and studying the actual science of the sickness.

The Quality of Care

The general argument here is now the quality of care. It seems reasonable that everyone should be offered proper health coverage, no matter what situation, yet this will eventually cost the medical industry. To operate a medical facility requires money; from the staff, to the equipment, to the medicine, and so forth. So while people are getting their affordable coverage, the medical industry is slowly losing profits. One can only predict that it may be a matter of time, before doctors receive major pay-cuts, and the medicine and treatments are not as effective as they once were. With major-cuts and a decline of solid treatment, what’s to stop our health from going downward. It’s a serious concern that must be considered in this new reform.

The Future of Health Care Reform

It still may be a little early to jump to assumptions on how things may play out. The bill itself has hardly even begun to lay out its new policy, and many of its effects are spanned to begin over the next few years. However medical companies have already prepared for these new policies to take way, and have already begun to restructure their spending budget. I would expect the field of medical research to be the first to be cut, since it doesn’t generate any sudden profit. Although this is an extremely vital area for the future of our health, it is the most practical move from a business perspective.

So the question is no longer, will scientists ever be able to find the cure for cancer, HIV, polio, Ebola, and so forth. It’s whether these scientists will ever be able to find the time to search for these cures. It’s a frightening thought, to consider that while we may be providing a common necessity to everyone, we may be slowly regressing its quality.

Michael Cash is a twenty something freelance writer and internet consultant residing in western Michigan. When not coaching people out of 1990s era web practices and working on his Masters Degree, a passion for politics and current events consume his free time.

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In September 2009, we reported on an Australian Patent Office (APO) decision relating to an application for an extension of patent term for a trans-dermal patch.  The application for an extension of patent term was denied by the APO on the basis that the claim was not directed to a “pharmaceutical substance” as is required by Section 70(2)(a).  Our report on the APO decision denying the application for an extension of patent term can be found at the below link.  As you can see, we found the APO’s decision uncontroversial, given that the claim was limited by reference to a “backing layer”.  LTS Lohmann Therapie Systeme AG and Schwartz Pharma Ltd and Commissioner of Patents [2010] AAT 809.

The patentee appealed the APO decision to the Administrative Appeals Tribunal (AAT).  The AAT has now handed down a decision confirming the APO’s denial of the application for an extension of patent term.  The AAT appeal decision can be found here:  LTS Lohmann Therapie Systeme AG and Schwarz Pharma Ltd and Commissioner of Patents [2010] AATA 809 (22 October 2010).

Whilst we find the AAT’s confirmation of the original APO denial uncontroversial, we are concerned by the AAT’s reasoning and particularly by the AAT’s comments at paragraph 32 where the AAT is critical of an unrelated APO decision (the Organon decision) in which the APO granted an extension of term for a patent directed to a steroid-impregnated, polymeric implant.  In the Organon decision, the APO formed the view that the proper approach to deciding whether a claim is directed to a “pharmaceutical substance” (and hence eligible for an extension of term) is to look at the level of integration between the formulation and the associated delivery device.

At paragraph 32 of the appeal decision, the AAT suggests that the proper approach is to narrowly construe the phrase “pharmaceutical substance” to mean “the active ingredient(s)”.  If the AAT’s approach is correct, then an extension of term will only be available for patents which have claims directed to novel & inventive active(s).  The presence in the claim of any non-active will disqualify the patent from an extension of term.

It is our view that the AAT has seriously erred in construing “pharmaceutical substance” in this extremely narrow way.  Our view for a broader construction is supported by the fact that “pharmaceutical substance” is defined in Schedule 1 of the statute as meaning “a substance (including a mixture or compound of substances) for therapeutic use…”.

We now wait to see how the APO will deal with the next application for an extension of term where the claim is limited by reference to some non-active constituent.

Today’s post is by Guest Barista Bill Bennett of Pizzeys.

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