Kristine Wilson

Monday, 30 June 2003 05:31

Foreign trademarks

Have you experienced the nightmare of foreign trademark filings? If someone asked what would simplify the process of registering a trademark in a foreign country, you might respond, "Give me a single application with boxes to check for all the countries I want and allow me to file it in the U.S. Patent and Trademark Office with U.S. currency."

Here's good news: What you probably considered a trademark fantasy is about to become reality.

The Madrid Protocol, or simply the Protocol, is scheduled for implementation in the United States Nov. 2, 2003. It is administered by the International Bureau of the World Intellectual Property Organization (WIPO) in Geneva, Switzerland.

The advantages

The Protocol will permit an applicant to file for trademark protection in multiple member countries (for a complete list, visit www.wipo.int/madrid/ en/index.html) using one application filed in the U.S. Patent and Trademark Office (USPTO). The fee depends upon the number of countries selected.

This streamlined process results in a single trademark registration with a single registration number and renewal date that provides protection in each member country in which the application passes that country's examination. Cost savings, time efficiency and streamlined maintenance are the primary advantages to the Protocol.

The disadvantages

The Madrid Protocol is not a perfect, one-size-fits-all solution for every trademark owner. Disadvantages include:

* Local counsel must be retained to respond to Office Actions.

* The applicant obtains protection only in the selected countries, rather than uniform protection in all member countries (you may wish to compare to a Community Trade Mark in the European Union).

* For the first five years, the Madrid Registration is dependent upon the good standing of its corresponding basic application (discussed below).

* Madrid registrations cannot be assigned to entities in nonmember countries.

How to obtain registration

To obtain a foreign trademark registration under the Madrid Protocol, an individual or business that resides in a Protocol member country must own a home country trademark application or registration.

This national application or registration is the basis for a Madrid Application and is referred to as the basic application or registration. The basic application and the Madrid Application can be filed simultaneously.

The Madrid Application is sent to WIPO, which confirms that the necessary requirements have been met and publishes the mark in the WIPO Gazette of International Marks. WIPO then forwards the Madrid Application to the selected member countries for examination and approval.

Although not quite a dream come true, the Madrid Protocol promises to greatly alleviate the nightmare of foreign trademark filings.

For more information on foreign trademark filings, contact an attorney. Reid M. Wilson is an attorney in the Washington, D.C., office of Vorys, Sater, Seymour and Pease LLP, where he practices in the Technology and Intellectual Property Group. He can be reached at (202) 467-8825, rmwilson@vssp.com, or by visiting www.vssp.com.

Tuesday, 22 March 2005 19:00

Out of context

The appellate court for patent appeals across the country is poised to make what many believe will be the most important decision on patent claims construction in a decade.

Oral argument was heard in February in Phillips v. AWH Corp., a case which will decide what role dictionaries play in determining the meaning of words included in patent claims.

Patent claims define what the patent covers or what the inventor may exclude others from doing. To infringe a patent, the infringer's product or activity must fall within the scope of a valid patent claim and not just within the description of the invention set forth in other portions of the patent. Therefore, key to every patent infringement case is determining the meaning of terms used in the claims.

For years, the United States Court of Appeals for the Federal Circuit indicated that patent claims should be construed primarily by reference to so-called intrinsic evidence. That includes claims and specifications, as well as prosecution history, which is the record made during the application process. Only when an ambiguity remains should the court consider other extrinsic evidence, such as dictionaries, treatises and expert testimony.

More recently, the court has provided conflicting direction on the proper procedure for claims construction, indicating at times that dictionary definitions should be consulted first to establish the ordinary meaning of claim terms, which should be adopted unless the patent specification clearly states otherwise.

Last July, the Federal Circuit decided to reconsider its prior ruling in Phillips and requested additional briefing from the parties and friends of the court (amicus curiae) regarding the proper judicial procedures for claim construction.

Groups submitting amicus briefs included patent lawyer associations, law professors, consumer groups and companies such as Visa, IBM and Novartis. The overwhelming consensus of the 33 amicus briefs is that claim terms should be interpreted by looking primarily at how the terms are used in the claims, specification and prosecution history, and only secondarily at dictionaries and other extrinsic evidence.

The majority also favor allowing expert testimony to play some role in claim construction and giving some deference to the trial court's claim construction, particularly where the court made factual determinations.

There was little agreement on whether general purpose or technical dictionaries should be given more weight and whether dictionary definitions should be applied narrowly or broadly.

Using all published dictionary meanings would be consistent with the U.S. Patent Office's policy of giving the broadest reasonable construction to patent claims. However, this approach could be costly and time-consuming. There are almost 73,000 versions of English language dictionaries, and the Federal Circuit itself has resorted to using 24 dictionaries over the past nine years.

Others argued that importing broad dictionary meanings to claim terms often results in unfairly granting artificially broad patent claims that well exceed the scope of anything the patent applicant invented. These parties favor narrowing dictionary meanings to only those consistent with the specification, or to apply only the narrowest meaning.

Claim interpretation often hinges on seemingly insignificant words. In a recent case involving three major food conglomerates and a pet food product, the key issue was whether the word "ingredients" in the patent claims included only the starting materials or also the end components of the finished product. The Federal Circuit used dictionary definitions to conclude the word included the end components even though the specification of the patent appeared to use the term to refer to only starting materials.

A decision in Phillips is not expected until early 2006. In the meantime, a patent applicant could specifically define each claim term but by doing so would forfeit the right to later claim a broader definition should apply. Short of this, the applicant could identify pertinent references that should be resorted to for claims interpretation.

Both technical references as well as general dictionaries should be checked to ensure that the definitions of each term chosen have the intended meaning. Finally, other time-honored methods designed to secure valid patent protection with sufficient scope to protect the invention from future infringement should also be employed.

Roberta R. Wilson is counsel in the Pittsburgh office of Buchanan Ingersoll PC and is a member of the firm's Intellectual Property Section. Her IP experience includes such issues as patents, trademarks, Internet, domain names and copyright and trade secret matters. Reach her at (412) 562-8396 or wilsonrr@bipc.com.

Thursday, 23 October 2003 11:11

IT outsourcing

Technology professionals and business executives may be overwhelmed by the complexity of their company's IT environment and thinking about outsourcing.

When deciding whether to outsource, there are many factors to consider. These include identifying whether investment in a particular technology is the best decision, given how quickly it can become obsolete; how scalable the IT infrastructure should be to support the demands placed on it; how effectively you can manage this environment to support corporate business objectives; and potential cost savings.

Potential cost savings depend on the size of the company and the scope of services. Generally, a company considering whether to outsource should look at the explicit cost -- the direct cash outlay -- and compare this with the costs of keeping the function in-house. However, any costs incurred by outsourcing must be weighed against potential gains, measured by metrics such as access to new technology and skilled workers, improved service levels and improved time to market.

Ultimately, the decision to outsource the ongoing support and management of your company's IT infrastructure may rest on the realization that you do not have the resources to do it yourself.

Managing computing infrastructure

Some of the "pain points" your company may be experiencing in managing its computing infrastructure could be driving your need to outsource your systems. These pain points can include:

* Providing a scalable, secure and highly available computing infrastructure that minimizes costs while ensuring service quality

* Controlling network and systems complexity and obsolescence while managing an expanding infrastructure

* Ensuring bandwidth capacity and traffic loads at predictable costs to support mission-critical application environments

* Competing in an environment where rapid time to market and expanded geographic reach are critical

* Enabling an agile, flexible work environment that supports a rapid response to changing market demands

* Managing a multitude of best-in-breed service providers and product vendors needed to support the highest degree of service delivery

* Experiencing difficulty hiring and retaining skilled IT staff

The combination of these pain points forces companies to lose focus on their core competencies. They are turning to external service firms to assist in the development and management of their IT infrastructure, from the network to the desktop. There are many benefits to outsourcing your IT infrastructure.

* Ability to focus on core competencies. By handing over noncore activities, a company can concentrate on activities central to its value proposition and increase its competitive positioning

* Faster and higher-quality service and improved efficiency. Vendors' economies of scale, combined with service level guarantees, translates into increased operational efficiency. Along with higher-quality service, many outsourcers claim to reduce cost of management by up to 25 percent.

* Access to new skills and technology. Outsourcing gives a company to up-to-date technology and skilled human capital.

* Greater flexibility. The flexibility gained through outsourcing helps a company react quickly to changing market conditions, fluctuating demand cycles and increased competition.

* Staff reallocation. Personnel whose job responsibilities are reduced or eliminated can be reassigned to more strategic tasks.

* Lower long-term capital investments. In a typical IS outsourcing contract, the vendor takes ownership of and responsibility for managing all or part of the client's IS operations or infrastructure, eliminating the client's ongoing investments in computer equipment.

* Improved predictability of costs. Outsourcing provides predictable yearly costs for the management of all or part of the IS infrastructure

By placing IT systems in the care of a trusted third-party service provider, a company is assured of a scalable, secure, up-to-date computing architecture at a predictable cost. MARK WILSON (mwilson@pconcall.com) is vice president of operations at PC On Call. PC On Call focuses on small and mid-sized businesses, first understanding your business goals and objectives, then aligning technology to reduce costs, increase productivity and provide competitive agility. Get your free business technology assessment, a high-level summary of how your business stacks up in these five areas, by calling PC On Call at (888) 726-6225, ext. 2124, or by visiting www.pconcall.com.

Tuesday, 26 August 2003 11:46

Monopolistic tendencies

Standard Oil. Ma Bell. Microsoft.

These companies, along with the word monopoly, most often come to mind when we hear "antitrust." Large national and international companies may make the news, but antitrust issues can be just as important for small or medium-sized businesses. In fact, a large company may have the resources to fight and survive an antitrust suit; a smaller company might not.

Any company that sells anything can be involved in -- or accused of -- an antitrust violation. The two most common areas of concern involve pricing practices and collusion.

Price carefully

Buying in bulk often costs less. That's as true for business products as it is for groceries.

But if you provide favorable pricing based on volume, and only one company in a particular industry can afford your volume discount, smaller competitors of that large company may feel unfairly disadvantaged by your pricing. The Robinson-Patman Act of 1936 forbids companies from price discrimination when the effect would be to lessen competition or create a monopoly.

While there are a number of defenses available under this statute, it generally takes an attorney to decipher them. Without understanding this law, even though it may not have been your intention to violate its prohibitions, those smaller companies could file suit against you for unfair pricing.

Communication vs. collusion

Many industries have trade groups or associations. When they meet, owners and workers discuss trends, share ideas and network.

That's communication, and it's all well and good. But if that conduct turns into an agreement on fixing prices, types of customers or sales territories, that's collusion. There are steep fines for companies and jail sentences of 18 months to three years for employees and company owners found guilty of collusion.

The federal government does not just prosecute big companies, and state attorneys general can bring similar suits against companies that do business within their state.

Top to bottom issues

It's obvious that two business owners who get together and fix prices purposefully are doing something wrong. It's bad for competition and for customers.

But what about line-level employees? Imagine that one of your salespeople talks with a peer from a competitor's company. They get together and essentially say, "I won't call on prospects who are your customers if you don't canvass my customers. It'll just make things easier for us both."

That's illegal collusion, and it can put your company in jeopardy. And it certainly isn't in the best interests of customers.

Drawing the line

There are several ways to protect your business.

* Education Make sure that employees involved in marketing, pricing and sales are aware of the difference between healthy competition and illegal antitrust activity.

* Policy Include a section on antitrust issues in your written employee policies. That can help show the government that a violation may have been an individual issue, rather than a companywide problem.

* Early detection Keep an eye out, both in your company and in your industry, for signs that something fishy is going on. The federal government has an amnesty policy for the first company that comes forward with information about an antitrust violation.

Your attorney can help in several ways, by drafting your educational materials and policy documents, by explaining the antitrust issues that are most likely to arise in your business and by letting you know what your rights are. If one of your competitors engages in illegal practices, going on the offensive may be your only defense against surrendering to unfair, predatory pressures. James A. Wilson is a partner in the litigation group of Vorys, Sater, Seymour and Pease LLP. Reach him at (614) 464-5606 or www.vssp.com.

You got the approval to implement a new technology solution that will provide huge productivity gains for your business. You've spent countless hours selling the business impact to your partners.

Several months after completion, employee productivity has decreased, project timelines have slipped due to unknown variables, and what was expected to have a large business impact has become a burden. What went wrong?

Unless proper due diligence is completed prior to implementing projects, the solutions rarely pay dividends.

There are five key pillars of an IT infrastructure to evaluate prior to project implementation that can save businesses time, money and heartache.

1. Network

The network is the lifeblood of the business. All data moves across it, and depending upon your network structure, efficiencies in moving the data are either highly optimized or inefficient.

Inefficient networks cost business dollars due to lost productivity. Users often complain about responsiveness, dropped connections, or an inability to get to certain data. Many business owners aren't aware of how their infrastructure is being utilized. Often, users have loaded the network with streaming video, music and radio that slow data transfer, leading to unnecessary network bandwidth upgrades.

Often businesses add sales offices or upgrade their main business applications and fail to understand the impact this will have on the network infrastructure. Without aligning the business objectives with the network infrastructure, businesses are exposed to additional costs.

2. Security

Security goes well beyond anti virus software and firewalls. All firewalls are shipped with a factory default setting that allows them to work out of the box. This leaves businesses exposed and vulnerable to attacks because the firewalls are not properly configured. Hackers and intruders don't attack specific businesses, they attack vulnerabilities. Do you have a security policy that enables you to manage proactively your security risks?

3. Back-up and recovery

Seventy percent of the failure with respect to back-up and recovery is due to people and process. It's critical to understand how, when and where your data is being backed up. To best control data, all data should reside in a central location. This includes field sales data.

Ask yourself, "If my salespeople were to go away today and I lost all customer data, both prospect and current, how long would it take me to regain that knowledge?" This could be very costly, and pose not only an internal issue but also external due to customer image, credibleness and capability.

4. Software

How many users have installed software brought from home? When was that last time you evaluated the impact of this software on your IT infrastructure? Maybe the problems you're having aren't due to the new application you just installed, but to the conflicts created when employee download music streaming software applications.

The other cost is due to variations in operating systems that create incompatibility issues when changes are made in your environment, creating costly downtime or lost productivity. Creating a standardized software environment allows for greater agility and less disruption when other infrastructure changes occur.

5. Hardware

New, more robust server operating systems enable businesses to look at how to minimize the costs of multiple servers and the associated administration and backup costs, and how to consolidate them. Minimizing the number of servers not only results in costs savings but also reduces associated management.

The time to think about this is now. As of January 2004, NT servers will not be supported by Microsoft, leaving you vulnerable to attacks and exposures. Mark Wilson (mwilson@pconcall.com) is vice president of operations at PC On Call. PC On Call focuses on small and mid-sized businesses, first understanding your business goals and objectives, then aligning technology to reduce costs, increase productivity and provide competitive agility. Get your free business technology assessment, a high-level summary of how your business stacks up in these five areas, by calling PC On Call at (888) 726-6225, ext. 2124 or by visiting www.pconcall.com.

Friday, 25 April 2003 11:54

Are you willing to risk your business?

A recent survey of more than 500 businesses found that the threat from computer crime and other information security breaches continues unabated.

And the financial toll is mounting, according to a survey by the Computer Security Institute with the participation of the FBI Computer Intrusion Squad.

Eighty-nine percent of respondents said their companies have firewalls, and 60 percent have intrusion detection systems. However, 40 percent also reported system penetration from the outside.

Ninety percent said they use anti-virus software, but 85 percent were hit by viruses and worms.

Among other findings:

* 90 percent had detected computer security breaches within the last 12 months.

* 80 percent acknowledged financial losses due to breaches.

* 74 percent cited Internet connections as a frequent point of attack.

* 78 percent detected employee abuse of Internet access privileges.

Malicious code attacks are the most common incidents reported. Financial losses due to viruses were estimated at $75,746 per organization. Computer Economics estimated the worldwide impact of just the Code Red virus was $2.62 billion.

Theft of proprietary information and financial fraud accounts for about two-thirds of the financial losses reported by respondents. The steady rise of security threats and occurrences are due to an increased awareness that information translates into market differentiation, competitive positioning and revenue.

In 2002, 20 percent of respondents acknowledged theft of proprietary information. While theft is an obvious issue, it's the financial losses that continue to soar.

Not all security breaches are criminal in nature. Nevertheless, they can be costly due to lost productivity. Employee abuse of Internet privileges -- downloading unauthorized software or inappropriate material, or misuse of e-mail systems -- cost businesses service and support dollars.

Many businesses are investing in Internet filtering and monitoring technologies and are seeing payoffs in increased productivity.

Key steps to mitigate the risk

* Get a third party audit of your systems.

Often businesses are so close to the key issues and developments that they lack the time and objectivity to step back and explore potential risks. Like auditors reviewing your accounting practices and procedures, having an independent review of your systems often provides valuable insight.

* Apply business processes and policies to proactively update infrastructure.

Businesses spend about a third of their time on hardware maintenance and repair, draining resources from critical services such as backup, security, and asset management. Whether internally or externally serviced, businesses need to ensure they are updating software and patches as a routine activity.

* Build scalable and standardized architectures.

In an economically challenged environment, businesses investing in additional technology need to ensure there is standardization. A multivendor environment adds approximately 25 percent additional cost in administration alone.

Plus, the time required to ensure patches and fixes are implemented across a mixed environment creates increased opportunity for unnecessary exposure.

As information technology becomes more strategic and integrated into the fabric of business, the speed and complexity with which it is implemented often results in a lack of security built into the system's architecture and process controls. Fraud, financial loss, viruses and Net abuse will only increase, and the financial impact will continue to grow dramatically unless security is taken seriously.

Don't underestimate personnel or unauthorized system users. It only takes one occurrence to cost your business thousands, if not millions, of dollars.

How sustainable would your business be following a $1 million exposure? Mark Wilson (mwilson@pconcall.com) is vice president of operations at PC On Call. PC On Call focuses on small and mid-sized businesses, first understanding your business goals and objectives, then aligning technology to reduce costs, increase productivity and provide competitive agility. Download a free security white paper from www.pconcall.com. Reach Wilson at (888) 726-6255, ext. 2124.

Tuesday, 26 February 2002 12:59

Habla español?

When planning a conference, trade show, or convention, don't ignore the needs of attendees from other countries. Make the effort to accommodate them, and not only will the event run more smoothly, you'll earn the participants' attendance at future events as well.

Pre-registration

Offer interpreters. Attendees often hire their own, but you can also make arrangements for them. On pre-registration materials, include a checkbox to request an interpreter for a set amount of time for a fee, and contract with a professional interpretation firm.

Assessment

From pre-registration materials, determine where attendees are from and what languages they speak.

Get professional translations of simple instructions like how to check into hotels, obtain registration packets and get to the event site. Send the translated material to attendees early.

On-site

Provide greeters with printed translations of basic questions such as, "What's your name?" and "Have you found your hotel yet?"

If possible, prepare for a United Nations-style headset arrangement and use professionals skilled at simultaneous interpretation. As a second option, have copies of the opening speeches translated into the appropriate languages and include them in registration packets.

Arrange for several interpreters to be available during event hours at a central location. They can assist with basics like negotiating transportation to and from the event and improving face-to-face business meetings.

Set up a place where international attendees can relax and read magazines from their countries, enjoy familiar foods and beverages, and even watch the international cable channel.

Off-site

Arrange for hotels to provide interpreters. See if a bank will set up a temporary money exchange counter at the hotel with the most international participants, and ask your translation service to create culture-specific welcome packages for guests. Kristine Wilson is president of Languages Unlimited Inc. She can be reached at 228-3336 or www.languagesunlimitedinc.com.