Intellectual Property
May 2000 Vol. 39, No. 3
Statements or expressions of opinion or comments appearing herein are those of the editors or contributors, and not necessarily those of the association or section.
Contents
* Practitioner's guide to provisional patent applications
* Career clips: Patricia Felch
* The first Internet-related case of copyright infringement in PRC
* IP news
By Aaron Brooks
Copyright © Aaron Brooks 2000.
Since January 3, 2000, all Internet domain name disputes have been governed by a single dispute resolution policy known as the Uniform Domain Name Dispute Resolution Policy (UDRP)1. The UDRP was promulgated by the Internet Corporation for Assigned Names and Numbers (ICANN) and must be used by each of the more than one hundred companies that have the right to register Internet domain names today. Much has been written about the technical operation of the UDRP2; however, to fully appreciate the importance of the UDRP, one should understand its genesis and the root of ICANN's authority to promulgate this new policy. This article discusses the technical issues associated with maintaining authority over a centralized domain name system (and what that means) and outlines a brief history of ICANN and its dispute resolution policy.
A. The res controversa
The thing which drives the debate and confusion about trademarks and the Internet is essentially a computer database known as the "Domain Name System" or "DNS." This database correlates domain names, such as "www.internet.com," with the actual numerical address for a particular computer on the Internet, such as "63.236.73.147." One doesn't need to use a domain name to access an Internet site: Entering the numerical address is sufficient. However, people find it more convenient to use a domain name, and therein lies the value of having a centralized correlation database.
The numerical address "63.236.73.147" is called an "IP Address," and there is a single unique IP Address for each computer on the Internet. Some IP Addresses are fixed locations on the Internet network; for example, typing "63.236.73.147" will always take the user to a particular World Wide Web site. These fixed numbers are called "static IP Addresses." Other IP Addresses change frequently; for example, people who access the Internet through a telephone dialup connection are typically assigned a different number each time they connect. These changing numbers are called "dynamically assigned IP Addresses."
Because static IP Addresses do not change, they can easily be revisited by Internet users. A second visit can be made even easier if, instead of a cold, inhuman number, one can access the site using a user-friendly domain name. The DNS database works by correlating the user-friendly domain names with the underlying static IP Addresses.
Note that the IP Address will always be a more encompassing way to access locations on the Internet than using the DNS. The reason for this is that every computer on the Internet must have an IP Address; thus, if you had a list of all IP Addresses, you would have a list of every computer on the Internet. By contrast, the DNS database does not contain every IP Address; it only contains those IP Addresses which correspond to the most popular domain names, such as those ending in a country code like ".us" and those ending in ".com" ".net" ".org."
In fact, there are other domain name databases on the Internet. For example, a group called the Open Root Server Confederation3 maintains an alternative domain name server which will not only allow you to resolve the popular domain names, but also resolve alternative domain names, such as those ending in ".faq."
The reason you normally cannot access these alternative domain names is that your Internet browser is never afforded an opportunity to consult an alternative domain name server. In a Windows 95-based environment, for example, one creates a dialup connection by, inter alia, choosing a domain name database, technically called a domain name server.4 When one requests a particular domain name, his computer makes a request to this domain name server which passes the request upwards in a hierarchical fashion until it ultimately reaches the main database controlled by ICANN. There are no alternative domain name servers in this hierarchy; therefore, if one begins with a domain name server which only points to ICANN, then one will only be able to resolve domain names which are contained within ICANN's database.
Realistically, this exclusive hierarchy is the key to the DNS. If there were multiple databases for the same group of domain names, then Internet users would never know which Web site might appear when a particular domain name was requested. In other words, if uncooperative registrars were permitted to compete for domain names ending in ".com," then it would be possible for these competitive databases to disagree about which domain name correlates with a particular IP Address. From the user's perspective, the Web site he gets for "www.internet.com" would depend upon which DNS he happened to be pointing to at the time.
In short, the thing in controversy is the unified, centrally controlled database which correlates certain static IP Addresses with easy-to-remember domain names. The main issue in the controversy is how best to keep the database unified while promoting competition among registrars. The controversy has been admirably resolved through a web of contracts, the history of which begins nearly a decade ago. The evolution of the UDRP is an excellent illustration of how these contractual relationships are related, as discussed in more detail below.
B. Chronology of events
The critical date in Internet regulatory history is December 31, 1992. Prior to this date, the Internet was a sprawling, expanding cooperative effort between the U.S. Government, Academia and various privately funded network projects. This pre-Internet sprawl culminated in a national high-speed network known as "NSFNET," developed by IBM, MCI and Merit under an award from the National Science Foundation (NSF). NSFNET provided a "backbone" to connect networks serving over 4,000 research and educational institutions across the country.
In 1992, Congress gave NSF statutory authority to allow commercial activity on the growing network.5 On December 31, 1992, NSF signed a Cooperative Agreement with a small company known as Network Solutions, Inc. (NSI) whereby NSI took over various network infrastructure management duties, including the registration of domain names ending in ".com" .net" and ".org." In 1995, the agreement was renegotiated under terms which granted NSI the exclusive right to register these domain names and further allowed NSI to charge fees for the registrations.
When NSI took over the registration duties, there were approximately 4,000 domain names in the NSF database. On March 6, 1997, NSI registered its one millionth domain name. Since then, domain name registrations have grown exponentially, as shown by the following statistics: one million domain names after four years; two million fifteen months later; three million six months later; four million four months later; five million three months later; and six million eleven weeks later.6
Beginning in 1997, a large grassroots movement began to change the domain registration process. The movement was spurred by three principal motivations: (1) increasing demand for competition in the registration process; (2) increasing confusion about the respective rights of domain name registrants and trademark owners; and (3) a strong desire among commercial internet users for a more formal and stable domain name system.
Two principal documents emerged from this process of change. First, in the spring of 1997, was the Generic Top Level Domains Memorandum of Understanding (gTLD-MoU) promulgated by the International Ad Hoc Committee (IAHC).7 The principal focus of this group was to add seven new generic Top Level Domains (gTLDs) to the root of the DNS, select new domain name registrars, and develop equitable domain name dispute resolution mechanisms. Specifically, IAHC proposed adding the following gTLD's: ".firm" ".web" ".shop" ".arts" ".rec" ".info" and ".nom."
Following publication of the gTLD-MoU, the U.S. Department of Commerce (DOC) produced the "Statement of Policy on Management of Internet Names and Addresses," generally known as the "White Paper.8" The government issued a Request For Comments (RFC) on the issues raised by the White Paper and ultimately invited the World Intellectual Property Organization (WIPO) to conduct a study of the relationship between domain names and intellectual property. After a ten-month process of public consultation, WIPO presented its recommendations on April 30, 1999.
In October 1998, in response to the White Paper and the WIPO recommendations, the Internet Corporation for Assigned Names and Numbers (ICANN), a California not-for-profit corporation, was formed. Contemporaneously, the DOC issued "Amendment 11" to the NSI Cooperative Agreement9 which required NSI to create an open domain name database which could be accessed by multiple entities; this database is now known as the "Shared Registry System" (SRS). Amendment 11 also contemplated the management of the newly created SRS by a company such as ICANN. On November 25, 199810, ICANN executed a Memorandum of Understanding11 with the DOC which called for operation of the SRS by ICANN in cooperation with NSI.
On November 10, 1999, after a successful testbed run of the SRS which lasted several months, ICANN, the DOC and NSI announced an agreement12 that would govern the future of domain name registrations. The two key provisions of the agreement were: (1) NSI recognized ICANN and agreed to operate the .com, .org and .net registries in accordance with the Registry Agreement between ICANN and NSI and future consensus policies adopted by ICANN; and (2) NSI agreed to become an ICANN accredited registrar for the .com, .org, and .net domains. With this agreement in place, ICANN essentially assumed control of the entire domain name system.
To facilitate its control, ICANN requires each domain name registrar to execute two basic contracts in order to gain access to the database:13 (1) the ICANN Registrar Accreditation Agreement (which includes a $5,000 registration fee); and (2) the NSI Registrar License and Agreement (which includes a $10,000 fee for the SRS software and requires the registrar to place a $100,000 performance bond). The ICANN Registrar Accreditation Agreement specifically requires each newly appointed registrar to adopt the UDRP and impose it upon its customers by way of the individual domain name registration contract which it uses. Thus, all new domain name registrars, including NSI, must use the UDRP in order to maintain access to the SRS.
C. Conclusion
In short, the UDRP has a long history. The source of authority for the UDRP and ICANN generally can be traced through a line of contractual obligations beginning with the individual domain name owner and ending with the United States Government. A domain name owner is bound to adhere to the UDRP by virtue of his individual contract with the particular domain name registrar he selected through the competitive process. The domain name registrar is bound to follow the latest version of the UDRP by virtue of the Registrar Accreditation Agreement it executed with ICANN in order to gain access to the SRS. ICANN has authority to require the registrar to sign the Registrar Accreditation Agreement by virtue of the Memorandum of Understanding it executed with the DOC on November 25, 1998. The DOC has the power to control which entities will administer the domain name system by virtue of statutory bureaucratic authority from the U.S. Government. Finally, the U.S. Government has the ultimate authority to control and delegate management of the Internet domain name system by virtue of its ownership and physical control over the database since the early formative stages of the Internet.
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1 http://www.icann.org/udrp/udrp.htm.
2 For an excellent summary, see Adler, Gilbert and Crane, The National Law Journal, pp. C6, January 31, 2000.
3 http://www.open-rsc.org/
4 For the technologically advanced and curious: Look at the properties for your dialup networking connection. Under "Server Types," click "TCP/IP Settings." The number under "Primary DNS" is the IP Address for a domain name correlation database. In a typical setup, this number will point to a database in the established ".com" system, the development of which is discussed in Part B of this article. You can, however, access the OSRC alternative database by changing this number to "199.166.24.1." Doing so will give you access to the traditional domain names as well as alternative domain names, such as "http://lighting.faq."
5 See Scientific and Advanced-Technology Act of 1992; Pub. L. 102-476 § 4(9), 106 Stat. 2297, 2300 (codified at 42 U.S.C. § 1862 (a)).
6 http://www.netsol.com/nsi/glance.html.
7 See http://www.gtld-mou.org/.
8 http://www.ntia.doc.gov/ntiahome/domainname/6_5_98dns. htm.
9 http://www.ntia.doc.gov/ntiahome/domainname/proposals/docnsi100698.htm.
10 http://www.icann.org/statusreport-15june99.htm.
11 http://www.ntia.doc.gov/ntiahome/domainname/icann-memorandum.htm.
12 http://www.icann.org/nsi/nsi-agreements.htm; see also http://www.icann.org/announcements/icann-pr28sept99. htm.
13 http://www.icann.org/registrars/accreditation-process. htm.
Practitioner's guide to provisional patent applications
By Emily Miao, McDonnell Boehnen Hulbert & Berghoff
Copyright © 2000 Emily Miao.
Introduction
Nearly five years ago, GATT-related changes to U.S. patent law led to the creation of the U.S. provisional patent application ("PPA"). While the principle rationale for the creation of the PPA was to place domestic inventors at equal footing with foreign inventors with respect to patent term,1 PPAs have become a popular, low-cost approach for domestic and foreign inventors alike for quickly obtaining "patent pending" status and preserving rights for their patentable inventions.2 Recent amendments to the patent statute under the American Inventor's Protection Act of 1999 ("AIPA") ensures further simplification of the PPA filing procedures and the continued popularity of PPAs.
This paper describes the mechanics of PPAs, AIPA amendments relating to PPAs, and PPA drafting and filing strategies.
Mechanics of provisional patent applications
A properly used PPA is a low-cost approach for inventors for quickly obtaining "patent pending" status and for securing a priority date for subsequent filing of regular utility application. PPAs can minimize costs for the inventor without risking loss of rights to the invention and allow inventors a one-year period to test their invention's market worthiness and decide whether the expense of preparing a regular utility application is warranted. Unlike regular utility applications, a PPA filing does not trigger the 20-year patent term. Thus, filing a PPA has the practical effect of extending up to one year a patent's expiration date. The patent expiration date is still 20 years from the date of filing a regular utility application.3
Because PPAs have minimal formal requirements and are relatively simple to prepare and file compared to regular utility patent applications, PPAs can be exploited in ways that are beneficial to the inventor.
(a) Formal requirements
PPAs, like their regular utility counterparts, are actual patent applications4 and must satisfy the written description, enablement, and best mode requirements of 35 U.S.C. §112. To file a PPA, all that is required is a specification of no particular required format, drawings if necessary to make and use the invention, a cover sheet indicating that the application is being filed as a PPA and a filing fee.5 PPAs do not require any claims, abstract or summary, cannot claim priority from other patent applications, are never searched or examined except for certain formal requirements, and are automatically abandoned in one year by operation of law.6 PPAs for biotechnology inventions need not comply with the sequence requirements for disclosed DNA or protein sequences.7
Because PPAs are automatically abandoned one year from its filing date, inventors were required to file a regular utility application to protect the invention after this one year period.8 However, AIPA changes to 35 USC §111(b)(5)9now permits the inventor to automatically convert the PPA into a regular utility application by filing a request rather than a new utility application. The Patent Office has recently issued a set of interim procedural rules10 to implement certain provisions of AIPA, including those affecting provisional patent practice. Under the interim rules,11 a request to convert a PPA filed without claims to a utility application must be accompanied by a fee and a preliminary amendment to introduce at least one claim. Moreover, the request must be filed prior to either: (i) abandonment of the PPA; or (ii) expiration of the twelve months of the PPA filing date.12 The conversion comes with a heavy cost: utility applications resulting from the automatic conversion of a PPA will receive the original filing date of the PPA and thus lose the advantage of the PPA's one year delay in triggering the 20 year patent term. Hence, it would make better sense for the applicant to file a regular utility application rather than a conversion request in order to maximize the patent term.
Additional AIPA amendments to 35 USC 119(e)13 now eliminates the so-called "last day" trap14 and extends the pendency of a PPA whose 12 month expiration date falls on a Saturday, Sunday, or federal holiday to the next secular or business day.15 The filing of regular application on the next succeeding business day would be adequate to preserve co-pendency and the §119(e) priority claim based on the PPA. Prior to the AIPA amendments, applicants were required to file a regular utility application prior to the 12 month expiration date of the PPA if that date fell on a Saturday, Sunday or federal holiday.16
Finally, an AIPA amendment to 35 USC §119(e)(2) now eliminates the co-pendency requirements for filing a regular utility application claiming priority based on a provisional application. Hence, if a provisional application was abandoned less than one year from its filing date, e.g., for failure to respond to certain formal requirements, a regular utility application can be filed by the one year anniversary of the PPA filing date and claim priority from the abandoned PPA application. For non-provisional applications to be entitled to claim priority from the abandoned PPA, the interim rules17 require that the PPA must be entitled to a filing date,18 the basic PPA filing fee19 and any required English language translation20 must be filed within a certain time period.
(b) Drafting strategies
While PPAs offer real benefits to many inventors, practitioners should be alert to any potential problems involving their use. For instance, hastily prepared PPAs with insufficient disclosure can result in loss of rights. While the patent law relaxed the formal requirements for PPAs relative to regular utility applications, a PPA that does not provide sufficient disclosure to comply with the requirements of 35 U.S.C. 112 to later achieve a good claim breath in a regular utility application can result in loss of rights to the invention in the U.S. and abroad. PPAs are never searched or examined for patentability purposes, however the disclosure of the PPA can be examined to determine (i) whether the subsequently filed regular application is entitled to the priority date and there is intervening prior art and (ii) whether an issued patent claiming priority from a PPA can serve as a 102(e) reference against a subsequently filed patent application.21
Numerous specific embodiments of the invention, including prophetic or paper examples, and relatively narrow to broad generic written descriptions of the invention should be included in a PPA.22 By including relatively large numbers of specific embodiments of the invention, the inventor has a greater likelihood of obtaining a correspondingly broad generic claim from a subsequently filed regular utility application. This is especially true in certain fields such as biotech and chemistry where the requirements for embodiments presented and claim breath are more stringent.23 While there is a risk that the claims may include inoperative embodiments, it is not the function of the claims to exclude possible inoperative embodiments.24 However, if a significant number of the disclosed embodiments is inoperative and this results in undue experimentation for the ordinary skilled artisan to practice the invention, a broad generic claim encompassing these embodiments may be invalid.25 Presenting several generic descriptions of varying scope in combination with numerous specific embodiments of the invention assures compliance with §112 requirements for generic claims of the subsequently filed regular application.26
When filing a series of "rolling" PPAs to include subsequent improvements and developments, each subsequently filed PPA application should include all of the subject matter of the previous PPA rather than split the support of a generic claim over several PPAs.27 This strategy avoids the danger of a generic claim in the regular application not being entitled to the filing date of any of the earlier filed PPA in the series.28 The addition of subject matter from a previously filed PPA can be achieved in several ways, however, the easiest way is to physically add the new disclosure to a previous disclosure.29
Because PPAs have no formal format requirements, a pre-existing document such as manuscript, research report, and excerpts from laboratory notebooks may be used as a PPA in a emergency filing.30 However, the document should be carefully reviewed to make sure that its disclosure complies with §112 requirements and that it does not unintentionally disclose proprietary information that is not part of the invention and that is intended to be kept as a trade secret. A PPA for which priority has been claimed will become part of the prosecution history of an issued patent.31
While claims are not required for PPAs, one concern among practitioners is whether the inclusion of claims in a PPA confer any advantage or disadvantage to the applicant.32 In the absence of any guiding legal decisions concerning this issue, claims of varying scope should be included in a PPA for several reasons. First, the existence of claims in the PPA would serve as a guideline to ensure that the specification complies with §112 requirements. The traditional enablement tests to determine whether the disclosure of a PPA without claims complies with §112 requirements may be difficult to apply. Prior cases concerning enablement requirements for U.S. continuation-in-part practice may provide guidance as to the applicable tests for enablement and sufficiency of disclosure.33 Second, claims may be helpful in determining the proper inventorship entity in a PPA.34 Third, the presence of claims offers some measure of protection in interferences proceedings.35 Under 35 U.S.C. §135(b), the opportunity to contest priority of an invention claimed in another patent may be lost unless a claim to the same patentable invention is present in the application within one year of the issue date of the patent.36 Finally, claims facilitate the conversion of PPA to a regular utility application under the new AIPA amendments.