Trademarks in China: The Toblerone® Case

Further progress in China's IP system is reflected in recent trademark litigation in China. See Vanessa Zhou's article on three-dimensional trademarks in China in a recent issue of World Trademark Review. She discusses the success that Kraft Foods experienced when suing to protect their trademark for the triangular 3D shape of their famous Toblerone® chocolate brand.

Along the way, she discusses the nature of trademarks on 3D shapes. Though unusual, they can be obtained.

A three-dimensional mark may consist of the configuration of the goods, the package of the goods or other three- dimensional designs. Popular examples of three-dimensional marks include the ridged Coca- Cola bottle, the Rolls-Royce figure of the Spirit of Ecstasy and Ronald McDonald, the McDonald’s clown character. In practice, however, not all three-dimensional signs can be registered and protected as trademarks.

This is because three-dimensional marks must not be merely functional. Article 12 of the Trademark Law states that "where an application is filed for registration of a three-dimensional sign as a trademark, any shape derived from the goods itself, required for obtaining the technical effect, or giving the goods substantive value, shall not be registered".

She continues to explain further details in deciding if a 3D trademark registration is possible.

Kraft prevailed against a Swiss competitor in protecting their Toblerone® brand. Given the track record of foreign companies increasingly prevailing against Chinese companies in IP litigation, when the facts are in their favor, I suspect and hope that the outcome would be similar if the infringer had been a local Chinese company. There may yet be cases of this kind to observe.

One of the challenges for 3D trademarks arises from related design patents, which may be held by other parties. Ms. Zhou gives a recent case in China where Nestlé sought to sue a Chinese soy-sauce manufacturer for infringement of their 3D trademark of a particular brown bottle shape for their soy sauce product. The competitor, Weishida, actually received a design patent for their bottle shape in 1991 and have been selling the product since 1983, and have sales far greater than Nestlé. Ms. Zhou says that these facts will make it very difficult for Nestlé to prevail.

A related problem occurs in patents, when companies doing business in China find that patents on their products have been filed and issued by others in China. Sometimes their own published patents have been filed by someone else, or in other cases someone has drafted a new patent that may seem to be based on the company's original patent or at least their internationally protected products. These problems are correctable, but can add to the challenges. It's important to have careful searches of Chinese patents done to detect such problematic patents and take appropriate action. As the Chinese IP system becomes more sophisticated and strengthens its resources, questionable patents will become much less of a problem.

Economic Development in Brasilia: Many Lessons for Government Officials

Below are two recent Pixetell presentations where I share some recent learnings about the exciting economic experiment that has been underway in the small Federal District of Brasilia, a region with 2.6 million people but a GDP of $61 billion, larger than that of many nations. The efforts since 2006 of the government in Brasilia have created an environment where respect for the rule of law and respect for the creative powers of the private sector have unleashed economic growth and resulted in their lowest unemployment rate in history. Next steps will be strengthening financial resources for small business and further strengthening Brazilian IP.

Special thanks to Adriano Amaral, Secretary of State for the State Department of Economic Development in Brasília for meeting with me and sharing his insights and experiences. Like many of the leaders in Brasília, Adriano is not a career politician, but an experienced business leader who has led successful startups, stepped in to bring struggling businesses to life, advised large and small companies, and taught some of the best MBA students in the world. Special thanks also to Hugo Teophilo, former Undersecretary of Economic Development for Economic Studies and Strategy, Government of Brasilia. Hugo is currently a 2nd-year MBA student at the National University of Singapore. I met Hugo in Singapore recently, and he sparked my interest in Brazil and introduced me to Adriano.

The success of the Federal District of Brasília demands further attention, and will be covered in our next book. Our first book with John Wiley & Sons, Conquering Innovation Fatigue, teaches several lessons that resonate with the experiment in Brasilia, as I observe in these presentations. We continue to look for further experts to interview as we explore the many stories and lessons from this region and from Brazil in general. Let us know if you have experiences and expertise to share! Email me at jlindsay at innovationedge.com. And if you'll be there in early June, let me know - we might run into each other!

The Pixetell below, created for InnovationFatigue.com, is set to 480 x 320 pixels). To see the full-sized presentation in higher resolution, click on the full-screen icon in the lower right-hand corner, or to view this in a new window, use this Pixetell link. Pixetell, by the way, is an incredibly easy and extremely innovative tool for sharing information from your computer.

Here is a 14-minute Pixetell presentation prepared for Innovationedge.com, further describing some of the good news coming from Brasilia, focusing on efforts to create an ecosystem for success. Again, I suggest clicking on the full-screen icon for better viewing.

Finding IP.com and Other References Cited in US Patents

For those new to patent searching, here's a quick example of how to see what issued US patents are citing IP.com publications, or other references. Yes, the PTO is increasingly turning to IP.com in its prior art searching.

A quick answer is that you can search for the string "IP.com" in the search field for "Other references" in some search tools such as FreePatentsOnline.com or the USPTO.gov search engine, though some search engines make it more difficult.

The video below is 480 pixels wide to fit on this blog. To see the full-screen presentation at higher resolution, click on the full-screen button in the lower right corner of the video. To see it in a new browser window, click here. It's about 9 minutes long since I show you some results and pontificate a bit on defensive publications and IP.com as a resource.

Patentable Subject Matter in Europe

IPKat has a good review on patentable subject metter in Europe. here's a brief excerpt:

In Europe, all inventions that are new and not obvious are patentable [Article 52(1) EPC], but this is subject to various exceptions and exclusions. The exceptions [Article 53 EPC] are:

• inventions the commercial exploitation of which would be contrary to "ordre public" or morality;


• plant or animal varieties or essentially biological processes for the production of plants or animals; and


• methods for treatment of the human or animal body by surgery or therapy and diagnostic methods practised on the human or animal body.

The exclusions, being things that are not considered to be inventions [Article 52(2) EPC] are:

1. discoveries;
2. scientific theories;
3. mathematical methods;
4. aesthetic creations;
5. programs for computers;
6. presentations of information; and
7. schemes, rules and methods for performing mental acts, playing games or doing business.

These are, however, only excluded from patentability to the extent that a patent application (i.e. the claimed invention) relates to one or more of these things as such.

As an aside, Lord Hoffmann (who was, until recently, the most senior IP judge in the UK) has come up with two reasons that could be used to at least explain these exclusions. Exclusions 1-6 above fall within what he considers to be the 'practical application principle', that these things cannot be the subject of a patent in themselves, but this would not necessarily stop practical applications being patentable (for example, the practical application of the discovery of the electrical nature of lightning to the invention of a lightning rod). The last exclusion falls within the 'human behaviour principle', since mental acts, playing games and doing business are all aspects of human behaviour that should not (presumably for practical as well as ethical reasons) be patented, even though they may be new, useful and inventive. See here for more details.

With the Bilski case coming before the Supreme Court, the scope of patentable subject matter in the U.S. may also soon become smaller.

Personally, I am puzzled why so many people reject software and business methods as patentable, when the world of innovation and discovery is increasingly moving away from compounds and gadgets per se and increasingly being found in how information is handled. Software and business methods are the future and represent some of the most exciting opportunities for valuable innovation, but the world's patent systems tend to emphasize more tangible innovation. The technical aspects of innovation in these realms are just as meaningful, clever, and impact tangible reality just as much or more than any clever new potato peeler.

Reinventing the Patent System

IBM, a world leader in obtaining patents, is also working to reinvent the way we do patents. "Reinventing the Invention System" is an article by IBM about the issues of patent quality and innovations such as crowd-sourcing to improve prior art searches. They helped support Beth Noveck in developing an exciting pilot program at the USPTO, Peer To Patent, a system in which inventors could expose their pending patents to the world for commentary and prior art suggestions, in exchange for receiving a rapid examination. The best prior art submitted would be sent to the PTO, who then would ensure that a substantial first office action was delivered within a year from entering the Peer to Patent system.

I tried Peer to Patent with a security system patent of my own. I was thrilled with the results and appreciated the insights shared by others. Of course, I especially appreciated the allowed claims and rapid prosecution! In principle, I'd much rather have a narrow patent that has been subjected to searching from many eyes than a broad one of more questionable validity. Plus I'd much rather have a patent that issues quickly, as mine did, than one that takes five or more years to get a first office action, as has happened to some patents I've been involved with.

Will crowd-sourcing be relied on in the future? I hope so. While the Peer to Patent pilot has closed for now as it reviews the results of its US pilot program, I understand that it will be coming back in some form, perhaps expanded and better than ever. It has its weaknesses, such as the difficulty of motivating searchers to take part and the lack of legal knowledge by the community doing the reviews. "Oh, this is obvious!" is so easy to say, but if you don't understand the legal definition of obviousness, you may condemn a claim that clearly is patentable, or fail to recognize why something that appears novel is probably not patentable after all. Without understanding the law, you may not know what art to search for and what prior publications or products are truly relevant.

Mark Nowotarski, President of Markets, Patents, and Alliances, has proposed an alternative system, the Examiner Advocate, in which skilled patent attorneys and technical experts evaluate sponsored patents and write a proposed office action for USPTO examiners to consider. The proposed office action would be posted on a website and could be used by the PTO, if desired. Of course, there would be a fee for this service. Great concept, one that could greatly enhance the quality of the office actions that are provided. Perhaps a combination of Peer to Patent's crowd-sourcing and the skilled approach of the Examiner Advocate could be the way of the future. Stay tuned!

Peer To Patent pilots have also been launched in Australia and in Japan. This could become a more global phenomenon.

Telling a Story in Patent Drafting: Toot Your Horn, Cautiously

A bare-bones approach to patents has been proposed by some highly respected practitioners, an approach in which "unnecessary" elements of a patent such as a background section are eliminated in an effort to avoid some potential pitfalls that have been seen in litigation when the Federal Circut imported unintended limitations into the claims or took other steps that limited patent coverage. However, in light of KSR and other recent judicial trends, there may be a case for more story telling to create the case for non-obviousness. If the patent never gets allowed in the first place, making it less susceptible to judicial whims in litigation will do nothing for your patent. There are many pitfalls to avoid, but I believe story telling is now increasingly important to get the patent allowed and then to lay a foundation for others to understand it.

In fact, if your patent will be considered for licensing or sale, it makes a lot of sense to craft your patents with the marketing story in mind. Intellectual assets that harmonize with your marketing story can be especially valuable and helpful in closing deals. If your competitive advantage comes from a particular aspect of a method or product, is that aspect the focus of at least one patent? Does the story in the background section align with what you will one day be telling a client to interest them in the value of your estate?

I've seen some products that tout nanotechnology and boast of their patents, but the claims have nothing to do with nanotechnology. Shouldn't they at least have nanotech in some of the dependent claims? I've seen many patents where the invention is presented in a dry, straightforward way - almost as if the invention were an "obvious" and straightforward solution, albeit novel, to a known problem. That approach might not succeed anymore.

Many times the most clever part of an invention was the recognition of what the real problem was that needed to be solved. Once the problem is known, if the solution is pretty straightforward, the invention may face obvious challenges because an examiner is going to consider what was "obvious to try" for one of skill in the art facing the problem you have solved. If the problem statement involved discovery and surprising insights to even frame it in the first place, then tell that story. Make it clear that there was a process of discovery and surprise in even getting to the problem to be solved. That is a story you are going to need to tell to the Examiner sooner or later--might as well make it clear and hard to miss from the beginning.

Story telling is key in the art of persuading. Examiners enjoy a good story as much as anyone, and can sometimes better understand why an invention really is patentable when the story is told properly.

Toot your own horn, but carefully. Don't suggest that your invention is capable of all sorts of advantages in any way that might suggest that all of the advantages can be obtained in any one embodiment, for an infringer might escape if not all of your advantages are provided. Don't rely one or two versions or alternatives - give many to provide support for your broadest claims. Be very cautious about statements interpreting other patents or other prior art lest an mistake or overly critical statement come back to bite you. But don't be afraid to tell your story of discovery and adventure in bringing forth your product and overcoming the barriers that might have held back those of merely ordinary skill in the art.

Announcing "Got Invention Radio"

I've had the privilege of working with inventor, innovator, entrepreneur, and author Brian Fried on some of his patents. Very impressive inventor and businessman. I've watched with pride as he's worked to educate and inspire many inventors in New York and beyond. Now I'm delighted to share the news about a new radio program he is hosting to help innovators and inventors. Got Invention radio (see http://www.gotinvention.com) makes it debut this week. Here's an excerpt from a press release at BusinessWire:

Inventor and Author Brian Fried Launches Nationally Broadcasted Live Radio Show “Got Invention Radio” on November 19, 2009 for Inventors and Entrepreneurs on wsRadio.com

NEW YORK--(BUSINESS WIRE)--“Got Invention Radio,” a new live talk radio show for inventors, hosted by Brian Fried, to premier on wsradio.com on November 19th, 2009. Got Invention Radio, a prime time hour long show airs Thursdays at 8:00 p.m. ET/ 5:00 p.m. PT. The show will be available through wsradio.com, the leader in Internet talk radio and can be accessed though the www.gotinvention.com LISTEN LIVE button.

"People have so many great ideas and inventions but they're not sure what their next steps are or how to bring their product to market. That will be the focus of Got Invention Radio,” stated Fried. It was through writing the book "You & Your Big Ideas" (www.youandyourbigideas.com) and founding the Inventors and Entrepreneurs Club in Suffolk County, NY, that Brian first realized the lack of resources available to inventors to get the answers to their many questions. He continued, ”Got Invention Radio is going to be a great resource for today's inventors and want-to-be-inventors. They'll be able to gain the knowledge they need from well known inventors and other service professionals that can help to make the process easier and contribute to their success.”

Got Invention Radio has an impressive lineup of upcoming guests to be interviewed and featured, including Mike Drummond, Editor-in-Chief of Inventors Digest, the only print magazine for inventors, as well as AJ Khubani, the Founder/CEO of TeleBrands, one of the world’s top “As Seen on TV” products company and Louis Foreman, author of “The Independent Inventor’s Handbook”, CEO of Enventys, executive producer of Everyday Edisons; and co-founder of Edison Nation.

About Got Invention Radio

Got Invention Radio welcomes listeners to call-in during live broadcasts to ask the guest experts questions. All shows will be archived and will be podcasted via itunes. A resource link is available on the website to serve as an ongoing flow of information for inventors and new business owners. Join our community online at Linkedin, Twitter and Facebook.

Congratulations, Brian!