The list includes many favorites like these:

1. Biotech Blog by Yali Friedman.

2. The California Biotech Law Blog by Kristie Prinz.

7. I Am Biotech with Margarita  Noriega.

8. BioLaw: Law and the Life Sciences.

16. Patently BIOtech with Margarita  Noriega.

18. Patent Docs with Donald Zuhn and Kevin Noonan.

22. Patent Baristas by Stephen Albainy-Jenei.

23. Theresa’s Biotech/Biomedical Blog with Theresa Phillips.

30. Pharmalot by Ed Silverman.

32. The Cross-Border Biotech Blog by Jeremy Grushcow and Dani Peters.

34. Medical Devices, Biotechnology, Bioengineering and the Like with Srihari Yamanoor.

41. Holman’s Biotech IP Blog with law professor Chris Holman.

44. In the Pipeline with Derek Lowe.

45. Pharma Blog Review with Chris Truelove.

See the whole list of 50 here.  If you have your own suggestions, let us know and we’ll add them on to our own list.

Related posts:

1. Vote: Blawg 100 Law Blogs The ABA Journal has released third annual Blawg 100 –...
2. Top Dogs in Patent Blogs Gene Quinn, at IPWatchdog, has been working on developing a...
3. Biotech Social Media Survey IAmBiotech, an online hub for showcasing the passion of the...

Related posts brought to you by Yet Another Related Posts Plugin.

In a quick review of the site, it seems like the system is not totally ready for prime time with some broken links and incomplete information.  For now, SyncIDS is divided in to four sections. (1) The IDS section automatically generates IDSs that need to be filed. (2) The client section allows you to view and modify information for each client such as the default filer and prior art categories for that client. (3) The matter section allows you to view and modify information for each matter such as the first inventor‟s name and any related matters. (4) The document section includes all of the prior art for a matter.

From SyncIDS:

In a nutshell, SyncIDS is a web based prior art database. There is nothing to install. All of the software and data is hosted and backed up by SyncIDS. When new documents or matters are added to the database, SyncIDS automatically shows all of the IDSs that need to be filed, and everything needed to file each IDS is automatically placed in a separate folder including a completed 1449 form and any non-U.S. PDFs. It reduces the time it takes to prepare an IDS and greatly reduces the chance for errors.

For example, let’s say you get an Office Action in matter 100. Simply open matter 100 in SyncIDS, enter those documents, and check them off as already cited for that matter. If there are U.S. patents or publications, you don’t even need to enter the issue/publication date or first inventor’s name. SyncIDS will do that for you. Assuming you have previously told SyncIDS what matters are related to each other (or you have categorized your matters and references by subject matter), SyncIDS will instantly generate an IDS for every other matter that needs one. You don’t even need to open up those other matters. No manually checking files or filling out forms.

If you’ve used SyncIDS, place your thoughts in the comments section below.

A copy of the user’s manual is here.

Related posts:

1. BIO 2009: How Biotech Helps Heal, Fuel, and Feed the World See how biotech innovations help heal, fuel, and feed the...
2. iBarista: How Biotech Helps Rock the World BIO Conference attendee Cynthia Shippam-Brett picked up an Apple (PRODUCT)...

Related posts brought to you by Yet Another Related Posts Plugin.

The ’698 and ’160 patents relate to improved methods of producing L-lysine (“lysine”) by cultivating Escherichia bacteria that have been genetically engineered to produce and accumulate greater quantities of lysine than naturally occurring (or wild- type) bacterial strains. Lysine is an essential amino acid, which means that most animals cannot synthesize it but must obtain it directly from their diets. Consequently, feed producers and farmers regularly add lysine as a necessary dietary supplement to low-protein grass feed for livestock. To supply lysine, the industry employs microorganisms such as Escherichia coli that can synthesize lysine from a carbon source (e.g., a sugar such as glucose) through a well- known biosynthetic pathway.

The patents involved in this case alter two mechanisms that contribute to E. coli’s limited lysine production. The first mechanism, known as “feedback inhibition,” is triggered by lysine itself. Specifically, when sufficient lysine is present to meet the organism’s needs, lysine inhibits its own production by inhibiting the activity of certain of its biosynthetic enzymes. At the same time, E. coli also employ enzymes, called lysine decarboxylases, which break down any extra lysine produced into a non-nutritious byproduct. Both mechanisms—feedback inhibition and lysine degradation—keep E. coli from accumulating excess lysine.

Scientists at Ajinomoto disrupted the lysine degradation limitation imposed on lysine production by engineering an E. coli with a mutant lysine decarboxylase gene. Specifically, the ’698 patent, entitled “Lysine Decarboxylase Gene and Method of Producing L-Lysine,” discloses the identification of the lysine decarboxylase gene ldc and the creation of an E. coli strain with mutations in ldc that reduce or eliminate lysine decarboxlyase activity. Asserted claim 15 of the ’698 patent covers a method of producing lysine by cultivating E. coli with mutant ldc and collecting the accumulated lysine:

A method for producing L-lysine, comprising:  cultivating an isolated microorganism belonging to the genus Escherichia, wherein the microorganism contains a [mutant lysine decarboxylase] in a liquid medium, thereby producing the L-lysine and accumulating the L-lysine in the liquid medium, and collecting the L-lysine produced and accumulated in step (a), wherein the microorganism belongs to the species Escherichia coli.

The’160 patent, entitled “Method of Producing L-Lysine by Fermentation,” discloses the creation of an E. coli strain with at least one of two mutations in dapA, the gene encoding the biosynthetic enzyme dihydrodipicolinate synthase (“DDPS”). The mutations release DDPS from the feedback inhibition imposed by excess lysine, and result in an E. coli strain that produces greater amounts of lysine than wild-type strains. Asserted claim 15 of the ’160 patent covers a method of producing lysine by cultivating E. coli that contain mutant dapA and collecting the accumulated lysine:

A method of producing L-lysine, comprising: cultivating a bacterium belonging [to] the genus Escherichia which is transformed with a DNA coding for a dihydrodipicolinate synthase originating from a bacterium belonging to the genus Escherichia and having mutation to desensitize feedback inhibition of L-lysine, wherein the mutation is selected from the group consisting of [a mutation to replace the alanine residue at the 81st position and/or a mutation to replace the histidine residue at the 118th position] in a suitable culture medium, producing and accumulating L- lysine in the culture thereof, and collecting L-lysine from the culture.

Both patents disclose certain E. coli host strains for practicing the claimed inventions. The ’698 patent describes a two-step process of producing a mutant ldc host strain. In contrast to the disclosure in the specification, it is undisputed that the actual strain used by the inventors had two additional genetic alterations made to it before the addition of mutant ldc. The inventors identified this strain as WC80.

Similarly, the ’160 patent discloses two host strains, B-399 and W3110(tyrA), into which the inventors introduced mutant dapA. Yet, before filing the Japanese application from which the ’160 patent claims priority, the inventors characterized a different strain, AE-70, as their best lysine producer.

After Ajinomoto filed a complaint at the ITC, the Administrative Law Judge (ALJ) found that the asserted claims were invalid for multiple violations of the best mode requirement of 35 U.S.C. § 112, first paragraph, and that both patents were unenforceable for inequitable conduct because of those best mode violations.

The ALJ concluded that the inventors had violated the best mode requirement by (1) concealing their preferred and only host strain, WC80-1 96S, via a misrepresentation of the steps actually performed to create a mutant ldc host strain; (2) concealing sucrose as their preferred carbon source, which materially affects achieving the claimed invention; and (3) submitting data associated with fictitious host strains in support of the best mode. Similarly, with regard to claim 15 of the ’160 patent, the ALJ concluded that the inventors had violated the best mode requirement by (1) concealing their preferred host strain, AE-70, and (2) submitting fictitious data in support of the best mode.

Section 112 of the Patent Act provides that the patent specification “shall set forth the best mode contemplated by the inventor of carrying out his invention.” Known as the best mode requirement, it comprises part of the quid pro quo of the patent grant, prohibiting inventors from receiving the benefit of the right to exclude while at the same time concealing from the public preferred embodiments of their inventions. To satisfy the best mode requirement, an inventor must disclose the preferred embodiment of his invention as well as preferences that materially affect the properties of the invention.

Determining compliance with the best mode requirement is a two-prong inquiry. First, the court must determine whether, at the time the patent application was filed, the inventor possessed a best mode of practicing the claimed invention. Second, if the inventor has a subjective preference for one mode over all others, the court must then determine whether the inventor “concealed” the preferred mode from the public.

The Federal Circuit held:

By defining the invention to include the host strains, we do not read the Commission’s decision as requiring the disclosure of any and all preferences related to the production of lysine, as Ajinomoto claims. The Commission simply defined the scope of the claimed invention to include “cultivating a bacterium” as recited by the asserted claims. Also, the Commission did not, as Ajinomoto asserts, require the disclosure of all subject matter having to do with the claim term “bacterium.” The Commission simply required the disclosure of the preferred and, for the ’698 patent, only bacterial strain that the inventors used to practice the claimed invention.

…

[W]e disagree with Ajinomoto’s interpretation of the Commission’s opinion and the law. First, the Commission’s opinion did not, as Ajinomoto contends, find that the inventors concealed the method of creating the host strain into which they later introduced an ldc mutation. Rather, the Commission found that the inventors concealed the identity of the preferred host strain, and specifically that other genetic alterations, including a lysC variant and sucrose utilization genes, had been introduced (by whatever method) into the only host strain used to practice the claimed invention. Cf. Ajinomoto Co. v. Archer-Daniels-Midland Co., 228 F.3d 1338, 1347 (Fed. Cir. 2000) (finding no best mode violation when one of skill in the art would know that the identified preferred host strain contained another genetic alteration).

Second, the best mode requirement cannot be satisfied by the deposit of a non- preferred strain. It is undisputed that the host strain deposited by Ajinomoto lacked the sucrose utilization genes and thus was not the host strain into which the inventors inserted an ldc mutation. Furthermore, while the deposited strain contained the lysC variant, the specification contains no disclosure of that fact, and one of skill in the art would not know that the strain had such an alteration. As such, the deposit failed to enable one of skill in the art to practice the inventors’ preferred embodiment and thus concealed the best mode.

Related posts:

1. A Divisional Patent Application By Any Other Name Is … Not A Divisional After Amgen tried to get a judgment against Hoffman-La Roche...

Related posts brought to you by Yet Another Related Posts Plugin.

The bill directs the Small Business Administration’s Office of Advocacy to conduct a study in consultation with the U.S. PTO to analyze how changes to the current system will impact the ability of small businesses to obtain patents, whether the change would create barriers, and how it will impact the costs and benefits to small businesses overall.

S. 3089

Be it enacted by the Senate and House of Representatives of the United States of America in Congress assembled,

SECTION 1. STUDY AND REPORT OF PATENT LAW CHANGES.

(a) Definitions.—In this section—

1. the term “Chief Counsel” means the Chief Counsel for Advocacy of the Small Business Administration; and
2. the term “small business concern” has the meaning given that term under section 3 of the Small Business Act (15 U.S.C. 632).

(b) Study.—

1. IN GENERAL.—The Chief Counsel, in consultation with the Director of the United States Patent and Trademark Office, shall conduct a study of the effects of changing from a first-to-invent to a first-to-file invention priority system under patent law under title 35 of the United States Code.
2. AREAS OF STUDY.—The study conducted under paragraph (1) shall include examination of the effects of changing from a first-to-invent to a first-to-file invention priority system, including examining—

(A) how the change would affect the ability of small business concerns to obtain patents;
(B) whether the change would create or exacerbate any disadvantage for applicants for patents that are small business concerns relative to applicants for patents that are not small business concerns; and
(C) the costs and benefits to small business concerns of the change.

(c) Report.—Not later than 18 months after the date of enactment of this Act, the Chief Counsel shall submit to the Committee on Small Business and Entrepreneurship and the Committee on the Judiciary of the Senate and the Committee on Small Business and the Committee on the Judiciary of the House of Representatives a report regarding the results of the study under subsection (b).

Related posts:

1. The Patent Reform Act of 2010: A Substitute S. 515 Here comes the Patent Reform Act of 2010 in the...
2. Hearing Today on H.R. 1260, the “Patent Reform Act of 2009” The U.S. House of Representatives Committee on the Judiciary is...
3. Senate Committee: 12 Years of Data Exclusivity is Cool “To amend the public health service act to establish a...

Related posts brought to you by Yet Another Related Posts Plugin.

Almost everybody in this part of the world- irrespective of whether they are hiking enthusiasts/outdoor buffs or not, is familiar with North Face Apparels. In December 2009, North Face filed a complaint in the U.S. District Court for the Eastern District of Missouri for trademark infringement and dilution. South Butt is owned and operated by Missouri University student James Winkelmann who started this apparel line in 2007 to mock North Face.

Early on, upon being threatened by North Face with an infringement suit, Winkelmann offered to sell his enterprise for US $ 1 million. But with the impending lawsuit, the sales for South Butt soared and subsequently Winkelmann withdrew his offer.

This lawsuit in addition to addressing trademark infringement, dilution and unfair competition under the Trademark Act of 1946, 15 U.S.C. §§ 1051 (also known as the Lanham Act), also has an interesting aspect of trade dress infringement.

Often times, litigators are so focused upon the “popular” intellectual property like patents, trademarks, copyrights that lesser known, but equally important intellectual property like trade dress gets the step-daughterly treatment. One does not often come across trade dress cases. But two cases where the United States Supreme Court granted certiorari are the Two Pesos case and the Qualitex case.

Section 43(a) of the Lanham Act states inter alia the following:

“Any person who in connection with any goods or services uses in commerce any word, term, name, symbol, or device, or any combination thereof, or any false designation of origin, false or misleading description of fact, or false or misleading representation of fact, which is likely to cause confusion, or to cause mistake, or to deceive as to the origin, sponsorship, or approval of his or her goods, services, or commercial activities by another person, or .in commercial advertising or promotion, misrepresents the nature, characteristics, qualities, or geographic origin of his or her or another person’s goods, services, or commercial activities, shall be liable in a civil action by any person who believes that he or she is likely to be damaged by such an act.”

While the Lanham Act does not explicitly define trade dress, a perusal of the above definition makes it obvious that trade dress should be protected. (“in connection with goods or services”…”uses any…symbol or device”).

Drawing parallels between trademark and real property, where does the boundary of a trademark end? How does a second comer in the market get saddled with the label of an infringer? What does trade dress encompass? One looks to the precedents in order to shed some light on these and other related issues.

Two Pesos v. Taco Cabana

This was the first of the two precedents and the facts are as follows.

Respondents are the owners of a fast food chain in Texas and own six such restaurants in San Antonio.  In their words Taco Cabana has the following trade dress:

“a festive eating atmosphere having interior dining and patio areas decorated with artifacts, bright colors, paintings and murals. The patio includes interior and exterior areas with the interior patio capable of being sealed off from the outside patio by overhead garage doors. The stepped exterior of the building is a festive and vivid color scheme using top border paint and neon stripes. Bright awnings and umbrellas continue the theme.”

Two Pesos opened up their restaurant in Houston and adopted an ambiance similar to that of Taco Cabana’s but did not deign to open one in San Antonio. Taco Cabana expanded their market by opening up restaurants in cities where Two Pesos was open and sued Two Pesos for trade dress infringement in 1987 under § 43(a) of the Lanham Act.

Section 43(a) does not mention either trademarks or trade dress. Neither does it mention anything about secondary meaning. Therefore a trade dress need not have secondary meaning in order to be protected. Secondary meaning is only required for descriptive marks.

Trade dress then can be defined as the overall appearance or image of the business in question.

In Qualitex v Jacobson, (this was briefly discussed in my earlier blog post of non traditional trademarks) Qualitex sought protection over the green gold colour of their cleansing pads.

The Federal Court judgment held that no trademark protection can be conferred for mere color. The Federal Circuit at that point of time, was undecided over the issue of trademark protection for color.

There are a few other related cases which are summarized for the benefit of the readers.

• NutraSweet Co. v. Stadt Corp.: absolute prohibition against protection of color alone;
• In re Owens-Corning Fiberglas Corp.: allowed registration of color pink for fiberglass insulation; and
• Master Distributors, Inc. v. Pako Corp.: declined to establish per se prohibition against protecting color alone as a trademark.

The Supreme Court put to rest all debates on this issue by holding that color can be protected under the Lanham Act. Even though color by itself is not fanciful or arbitrary or suggestive, however, over time consumers can come to associate a product with the color on its label. (Think yellow “M” for McDonald, red and white label for Coca-Cola for example).

Coming back to the North Face-South Butt debate, it is obvious that South Butt was started as a joke, a parody if you will. The products of the two companies are the same (sports gear); the logo of South Butt is a mere rearrangement of that of North Face’s logo. South Butt may get off lightly on the offensiveness of the name (FCUK got off with no rap on their knuckles) but trade dress infringement definitely exists.

To small timers, the idea of pulling off a joke on major companies may seem like a lark. However, doing so results in a criminal wastage of time and resources which could be spent in developing newer technologies (in this case apparel!). More importantly, if not settled out of court, it is a burden on the justice system and speedy disposal and adjudication of more relevant and pertinent cases is prevented.

However, at this point of time there exists no major deterrent for such cases and one hopes future small time infringers will pay heed to precedents and perhaps abstain from petty infringements.

Today’s post is by Guest Barista Shalini Menezes of ::O.bi:t.er: D:ic.t:um.

Related posts:

1. Non-Traditional Trademarks Trademarks have been in existence since as early as 5000...
2. Book Review Monday: Gray Markets: Prevention, Detection, and Litigation gray market n. a market employing irregular but not illegal...

Related posts brought to you by Yet Another Related Posts Plugin.