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Friday, July 1, 2011, Alert No. 2,253.
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OECD Releases Recommendations for Internet Laws, Policies and Practices

6/29. The Organisation for Economic Co-operation and Development (OECD) adopted and released a short statement [6 pages in PDF] titled "Communique on Principles for Internet Policy-Making" on June 29, 2011.

It is a wide ranging enumeration of recommended objectives for government policy makers and participants in the internet economy. See also, OECD release.

It recommends that policy makers preserve the "openness of the Internet", protect "privacy, security, children online, and intellectual property", reinforce "trust in the Internet", promote "ubiquitous access to and use of broadband Internet networks", provide government subsidies "in particular in rural and remote areas, attempt to increase demand for and usage of broadband networks, respect "human rights and the rule of law", and support the "free flow of information and knowledge, the freedom of expression, association and assembly, the protection of individual liberties".

The recommendations in most areas are sufficiently broad and qualified as not to incur opposition from OECD members nations, internet businesses, or other affected groups.

Although, the intellectual property related recommendations are specific enough to have drawn criticism from some interest groups. See, related story in this issue titled "OECD, Online Copyright Infringement, and Internet Intermediaries".

Free Speech. This document advocates "promoting the free flow of information". But then, the OECD members are only those nations that do allow for considerable free speech online -- European nations, plus the U.S., Japan, Korea, Canada, Australia and a few others.

Nations that engage in systematic internet censorship are not members of the OECD.

Privacy. This document addresses privacy issues in broad and vague terms. "Privacy rules should be based on globally recognised principles, such as the OECD privacy guidelines, and governments should work to achieve global interoperability by extending mutual recognition of laws that achieve the same objectives."

Also, "Cross-border enforcement co-operation will further protect privacy and promote innovation. Privacy rules should also consider the fundamental rights of others in society including rights to freedom of speech, freedom of the press, and an open and transparent government."

Free Trade. It also addresses trade issues in non-specific language. "Suppliers should have the ability to supply services over the Internet on a cross-border and technologically neutral basis in a manner that promotes interoperability of services and technologies, where appropriate."

And, "other barriers to the location, access and use of cross-border data facilities and functions should be minimised, providing that appropriate data protection and security measures are implemented in a manner consistent with the relevant OECD Guidelines ..."

Cyber Security. This statement touches on cyber security. "Policies to address security threats and reduce vulnerabilities are important".

"Policies to enhance online security should not disrupt the framework conditions that enable the Internet to operate as a global open platform for innovation, economic growth, and social progress and should not be used as pretence for protectionism. Policies should also aim to enhance individual and collective efforts for self-protection and promote trust and confidence."

Surveillance. The OECD statement does not expressly address law enforcement or intelligence agency surveillance, searches, data retention mandates, or equipment and system design mandates.

However, the statement contains several vague references. For example, it alludes to "the need of governments to enforce applicable law", and the role played by "Internet intermediaries" in "deterring illegal activity".

In addition, "Sufficient government enforcement resources and industry co-operation should also be available to ensure that Internet-based activities comply with law".

Finally, it states that "co-operation on cross-border investigations and enforcement actions should be improved."

Leslie Harris, head of the Center for Democracy and Technology (CDT), a Washington DC based interest group, wrote in a short piece that governments "are seeking additional control over the design of networks to facilitate their surveillance". However, she did not object to any specific language in this OECD document regarding surveillance.

OECD, Online Copyright Infringement, and Internet Intermediaries

6/29. The Organisation for Economic Co-operation and Development (OECD) adopted and released a short statement [6 pages in PDF] titled "Communique on Principles for Internet Policy-Making" on June 29, 2011.

This document provides some detail on intellectual property related laws and business practices. It begins with the statement that "Intellectual property protection is a fundamental tool for the advancement of innovation and creativity on the Internet."

"New and complementary approaches balanced to ensure effective protection of intellectual property should also be encouraged where necessary, and should also ensure protection of legitimate competition and fundamental principles such as freedom of expression, access to lawful content and Internet services and technologies, fair process, and privacy."

It continues that "Sound Internet policy should encompass norms of responsibility that enable private sector voluntary co-operation for the protection of intellectual property. Appropriate measures include lawful steps to address and deter infringement, and accord full respect to user and stakeholder rights and fair process. In keeping with the multi-stakeholder processes set out in this document, all parties have a role to play, including individuals, providers, intermediaries, and judicial authorities."

In a related discussion, this document advocates limitations on liability of internet intermediaries. It states that "Appropriate limitations of liability for Internet intermediaries have, and continue to play, a fundamental role, in particular with regard to third party content. Internet intermediaries, like other stakeholders, can and do play an important role by addressing and deterring illegal activity, fraud and misleading and unfair practices conducted over their networks and services as well as advancing economic growth. Limitations play an important role in promoting innovation and creativity, the free flow of information, and in providing the incentives for co-operation between stakeholders."

It continues that "Within this context governments may choose to convene stakeholders in a transparent, multi-stakeholder process to identify the appropriate circumstances under which Internet intermediaries could take steps to educate users, assist rights holders in enforcing their rights or reduce illegal content, while minimising burdens on intermediaries and ensuring legal certainty for them, respecting fair process, and more generally employing the principles identified in this document."

Rashmi Rangnath of the Public Knowledge (PK), a Washington DC based interest group, wrote a short piece published in the PK web site that criticizes the OECD statement, mainly for its "emphasis on protecting intellectual property", but also for its failure "to mention the importance of net neutrality or common carriage".

Rashmi Rangnath
Rashmi Rangnath
Copyright PK

Rangnath (at right) wrote that the OECD statement encourages "Internet Service Providers (ISPs) to act as private policemen of the Internet, allowing companies to make their own rules for filtering content outside of the safeguards of judicial process that governments would then enforce."

She argued that "allowing industry participants to make ``private law创 enforced by governments without some sort of public accountability and due process is so contrary to the fundamental principles of democracy".

She also wrote that "encouraging government's involvement in industry processes introduces an element of coercion. ISPs may not be free to reject mechanisms such as blocking when governments are involved and encourage such mechanisms. Plus, private industry action would not be subject to safeguards that government action would be."

For example, "in the U.S., government actions can be challenged as violations of citizen抯 due process or first amendment rights. However, if ISPs and rights holders were to develop mechanisms such as blocking content or cutting off user's Internet access, users are likely to find it harder to challenge these actions as violations of their fundamental rights."

The CDT's Harris wrote that this document "contains some troubling phrasing that could be interpreted in highly problematic ways".

For example, "In what appears to be an effort to address the legitimate concerns of the content industry, several of the principles include broad, ambiguous language about the responsibilities of Internet intermediaries generally, and access providers in particular."

She wrote that "We fear that these provisions will be read by some as justifying various forms of government regulation and the imposition on intermediaries of liability for various kinds of content.  That interpretation of the principles would be dangerous to the open, decentralized, user-controlled Internet."

Federal Circuit Raises Standards for Prevailing on Defense of Inequitable Conduct

5/25. The U.S. Court of Appeals (FedCir) issued its 5-1-4 en banc opinion [88 pages in PDF] in Therasense v. Becton, Dickinson and Co., a patent case regarding the defense of inequitable conduct.

rightThe opinion of the Court, written by Judge Rader (at right), revises and raises the standards for both the intent to deceive and materiality prongs of the inequitable conduct defense.

Excerpts Regarding Intent to Deceive. "To prevail on a claim of inequitable conduct, the accused infringer must prove that the patentee acted with the specific intent to deceive the PTO."

"A finding that the misrepresentation or omission amounts to gross negligence or negligence under a ``should have known创 standard does not satisfy this intent requirement."

The opinion also states that "the accused infringer must prove by clear and convincing evidence that the applicant knew of the reference, knew that it was material, and made a deliberate decision to withhold it."

"Intent and materiality are separate requirements. ... A district court should not use a ``sliding scale,创 where a weak showing of intent may be found sufficient based on a strong showing of materiality, and vice versa. Moreover, a district court may not infer intent solely from materiality. Instead, a court must weigh the evidence of intent to deceive independent of its analysis of materiality."

"Because direct evidence of deceptive intent is rare, a district court may infer intent from indirect and circumstantial evidence. ... However, to meet the clear and convincing evidence standard, the specific intent to deceive must be ``the single most reasonable inference able to be drawn from the evidence.创 ... Hence, when there are multiple reasonable inferences that may be drawn, intent to deceive cannot be found."

Excerpts Regarding Materiality. The Court also adjusted the standard for materiality. Six judges joined in setting a but for standard.

"This court holds that, as a general matter, the materiality required to establish inequitable conduct is but-for materiality. When an applicant fails to disclose prior art to the PTO, that prior art is but-for material if the PTO would not have allowed a claim had it been aware of the undisclosed prior art. Hence, in assessing the materiality of a withheld reference, the court must determine whether the PTO would have allowed the claim if it had been aware of the undisclosed reference. In making this patentability determination, the court should apply the preponderance of the evidence standard and give claims their broadest reasonable construction."

"As an equitable doctrine, inequitable conduct hinges on basic fairness. ... Because inequitable conduct renders an entire patent (or even a patent family) unenforceable, as a general rule, this doctrine should only be applied in instances where the patentee抯 misconduct resulted in the unfair benefit of receiving an unwarranted claim." (Parentheses in original.)

"Although but-for materiality generally must be proved to satisfy the materiality prong of inequitable conduct, this court recognizes an exception in cases of affirmative egregious misconduct. This exception to the general rule requiring but-for proof incorporates elements of the early unclean hands cases before the Supreme Court, which dealt with ``deliberately planned and carefully executed scheme[s]创 to defraud the PTO and the courts. ... When the patentee has engaged in affirmative acts of egregious misconduct, such as the filing of an unmistakably false affidavit, the misconduct is material."

"Because neither mere nondisclosure of prior art references to the PTO nor failure to mention prior art references in an affidavit constitutes affirmative egregious misconduct, claims of inequitable conduct that are based on such omissions require proof of but-for materiality. By creating an exception to punish affirmative egregious acts without penalizing the failure to disclose information that would not have changed the issuance decision, this court strikes a necessary balance between encouraging honesty before the PTO and preventing unfounded accusations of inequitable conduct."

More Information. Numerous entities and persons filed amicus briefs with the Court. See, Dennis Crouch's (PatentlyO) web page with hyperlinks to pleadings, briefs, and opinions.

Several entities associated with the information and communications technology sectors participated as amici curiae. See, Conejo Valley Bar Association's brief, Dolby's brief, SAP's brief, and Verizon's brief.

On July 12, 2011, at 1:00 - 2:00 PM EDT, the law firm of Fulbright & Jaworski (F&J) will host a web seminar titled "Making Sense of Therasense: Past, Present and Future of Inequitable Conduct". See, notice and registration page.

In This Issue
This issue contains the following items:
  OECD Releases Recommendations for Internet Laws, Policies and Practices
  OECD, Online Copyright Infringement, and Internet Intermediaries
  Federal Circuit Raises Standards for Prevailing on Defense of Inequitable Conduct
  USPTO Makes PPH Announcements Regarding Korea, Israel and Nordic Countries
  More Intellectual Property News
Washington Tech Calendar
New items are highlighted in red.
Monday, July 4

Independence Day.

This is a federal holiday. See, OPM list of 2011 federal holidays.

The House will not meet.

The Senate will not meet.

The National Press Club will be closed.

Tuesday, July 5

The House will meet at 1:00 PM in pro forma session only.

The Senate will meet at 2:00 PM.

EXTENDED TO AUGUST 4. Deadline to submit reply comments to the Federal Communications Commission (FCC) in response to its Notice of Inquiry (NOI) [46 pages in PDF] regarding how its rules and policies could be modified to provide greater economic, market entry, communication adoption opportunities, and incentives for Native Nations. This notice is FCC 11-30 in CG Docket No. 11-41. The FCC adopted it on March 3, 2011, and released the text on March 4, 2011. See, notice in the Federal Register: April 5, 2011, Vol. 76, No. 65, at Pages 18759-18761. See also, extension notice (DA 11-873).

Wednesday, July 6

The House will meet for legislative business.

8:00 AM - 3:00 PM. The National Science Foundation's (NSF) National Science Board will hold a closed meeting to discuss the NSF FY 2013 budget. See, notice in the Federal Register, Vol. 76, No. 123, Monday, June 27, 2011, at Page 37380.

10:00 AM - 12:00 NOON. The Heritage Foundation (HF) will host an event titled "Supreme Court's 2010 - 2011 Term". The speakers will include Neal Katyal (Principal Deputy Solicitor General). See, notice. Location: HF, 214 Massachusetts Ave., NE.

2:00 PM. The House Commerce Committee's (HCC) Subcommittee on Oversight and Investigations will hold a hearing titled "Federal Government Spectrum Use". See, notice. Location: Room 2123, Rayburn Building.

Thursday, July 7

10:30 AM. The House Commerce Committee's (HCC) Subcommittee on Oversight and Investigations will hold a hearing titled "The Views of the Independent Agencies on Regulatory Reform". See, notice. Location: Room 2322, Rayburn Building.

Deadline to submit initial comments to the Federal Communications Commission (FCC) in response to its 4th Further Notice of Proposed Rulemaking (NPRM) [16 pages in PDF] regarding out of band emission limits for mobile Broadband Radio Service (BRS) and Educational Broadband Service (EBS) devices operating in the 2496-2690 MHz band. This item is FCC 11-81 in WT Docket No. 03-66 and RM-11614. The FCC adopted this FNPRM on May 24, 2011, and released the text on May 27, 2011. See, notice in the Federal Register, Vol. 76, No. 109, Tuesday, June 7, 2011, at Pages 32901-32906.

Friday, July 8

10:00 AM. The House Homeland Security Committee's (HHSC) Subcommittee on Emergency Preparedness, Response and Communications will hold a hearing titled "Communicating With the Public During Emergencies: An Update on Federal Alert and Warning Efforts". See, notice. Location: Room 311, Cannon Building.

Deadline to submit reply comments to the Federal Communications Commission (FCC) in response to its Further Notice of Inquiry (FNOI) requesting information to assist it in preparing its annual reports to the Congress on the status of competition in markets for the delivery of video programming. 47 U.S.C. 548(g) mandates that these reports be prepared annually. However, the FCC does not comply with this statute. See, notice in the Federal Register, May 4, 2011, Vol. 76, No. 86, at Pages 25345-25352. This FNOI is FCC 11-65 in MB Docket No. 07-269.

Deadline to submit comments to the Federal Communications Commission (FCC) in connection with its June 28, 2011, event titled "Helping Consumers Harness the Potential of Location-Based Services". This proceeding is WT Docket No. 11-84. See, FCC notice.

EXTENDED TO AUGUST 5. Deadline to submit comments to the Federal Trade Commission (FTC) in connection with June 21 event titled "Patent Standards Workshop". See, notice in the Federal Register, Vol. 76, No. 93, Friday, May 13, 2011, at Pages 28036-28038, and FTC release of May 9, 2011. See also, story titled "FTC to Hold Workshop on Standard Setting and Patents" in TLJ Daily E-Mail Alert No. 2,242, May 16, 2011. See, FTC's June 29, 2011, extension notice.

Monday, July 11

Extended deadline to submit reply comments to the Federal Communications Commission (FCC) in response to the December 3, 2010, petition for declaratory ruling (PDR) filed by the CTIA regarding the scope of the federal ban on state and local entry regulation, codified at 47 U.S.C. 332(c)(3)(A), and the state of Connecticut's new regulatory regime for wireless service provides. See, CTIA's PDR part 1 and part 2, CTIA's request to extend comment deadlines, and FCC's extension notice in the Federal Register, April 18, 2011, Vol. 76, No. 74, at Pages 21742-21743. This proceeding is WT Docket No. 11-35.

USPTO Makes PPH Announcements Regarding Korea, Israel and Nordic Countries

6/20. The U.S. Patent and Trademark Office (USPTO) made three announcements regarding Patent Prosecution Highway (PPH) pilot projects pertaining to patent offices in Korea, Israel, and the Nordic countries of Denmark, Iceland and Norway.

The USPTO announced the expansion of the Patent Cooperation Treaty (PCT) - Patent Prosecution Highway (PPH) pilot program with the Korean Intellectual Property Office (KIPO).

The USPTO stated in one release that "The USPTO-KIPO PCT-PPH pilot started June 1, 2010 and originally allowed only PCT work product from KIPO as a basis to enter PPH at the USPTO. The expanded pilot will now permit PCT work product done by the USPTO as a basis to enter into KIPO. The expedited examination in each office allows applicants to obtain corresponding patents faster and with greater quality in each country. The PCT-PPH program will use international written opinions and international preliminary examination reports developed within the framework of the Patent Cooperation Treaty."

Also, "The expanded portion of the pilot will start on July 1, 2011, and is set to expire on May 31, 2012, but may be extended".

The USPTO also announced a new PPH pilot project with the Israel Patent Office (ILPO). The USPTO stated in another release that this "will permit each office to benefit from work previously done by the other office, which reduces the examination workload and improves patent quality. The expedited examination in each office allows applicants to obtain corresponding patents faster and more efficiently in each country. Under the PPH pilot program, an Office of Second Filing (OSF) may utilize the search and examination results of a national application filed in the Office of First Filing (OFF) in a corresponding application filed under the Paris Convention in the OSF." The USPTO added that "The trial period will start on July 1, 2011, and is set to expire on June 30, 2012, but may be extended".

The USPTO announced another new PPH pilot project with the Nordic Patent Institute (NPI) based on NPI's PCT work products. The USPTO stated in a third release that this "will permit the USPTO to benefit from the PCT work previously done by the NPI". Also, "The trial period will start on July 1, 2011, and is set to expire on June 30, 2012, but may be extended".

More Intellectual Property News

6/30. The Copyright Office published a notice in the Federal Register that announces that the CO "is extending for one year the interim rule relating to fees for special handling of registration claims that have been pending for at least six months. Currently, the interim rule is set to expire on July 1, 2011, and this extension will change the expiration date to July 1, 2012." See, Federal Register, Vol. 76, No. 126, Thursday, June 30, 2011, at Page 38306.

6/27. The U.S. Patent and Trademark Office (USPTO) published a notice in the Federal Register that announces, describes, recites, and requests comments on its proposed changes to certain patent fee amounts for FY 2012 to reflect fluctuations in the Consumer Price Index (CPI). The deadline to submit comments is July 27, 2011. See, Federal Register, Vol. 76, No. 123, Monday, June 27, 2011, at Pages 37296-37300.

6/6. The Copyright Office (CO) published a notice in the Federal Register that announces, describes, recites, and sets the effective date (June 6, 2011) for, its new regulations regarding notices of termination of certain grants of transfers and licenses of copyright under 17 U.S.C. 203. See, Federal Register Vol. 76, No. 108, Monday, June 6, 2011, at Pages 32316-32321.

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