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Published: 2007-04-30T17:28:53-07:00


Not Rethinking Digital Copyright: Ruling Ends ASCAP's Magical Thinking


Posted by Kristen Cichocki at 07:28 PMNot Rethinking Digital Copyright: Ruling Ends ASCAP's Magical Thinking   On April 25th, the U.S. District Court for the Southern District of New York ruled against the American Society of Composers, Authors and Publishers (ASCAP) holding that downloads of music over the internet did not constitute a public performance under copyright law.   Performance rights societies, such as ASCAP, license and collect royalties for the public performances of their member’s works. Traditionally this has meant all performances of a work on radio, TV, cable, in bars, clubs, malls, airlines, websites, etc; in short, public places where the work was played and somebody heard it.  ASCAP also collects performance fees on all digital streams, which are not unlike radio broadcasts.   On March 1, 2007, ASCAP filed a request to initiate a royalty rate proceeding with reference to royalties for online music provided by AOL, Yahoo! and RealNetworks.  In its motion, ASCAP asked the court to confirm that all transmissions of music over the internet, including downloads, are public performances.  This is where the magical thinking comes in.   Under Sec. 101 of the Copyright Act, “to perform” means to recite, render, play, dance, or act it, either directly or by means of any device or process. To perform a work “publicly” means 1) to perform at a place open to the public where a substantial number of persons gather or 2) to transmit the work to a place open to the public or by device or process in a way the public is capable of receiving it (think radio).   I don’t know about you, but when I download something I’m usually by myself (in the law library).  And what I get from iTunes is not a ‘performance’, but a copy of a musical work for which I’ve paid.  Not dissimilar to what I get when I go to my local music store and buy a copy of the latest Modest Mouse CD.   The court obviously agrees. In his opinion, U.S. District Judge Connor noted that the language of the statute was clear, “in order for a song to be performed, it must be transmitted in a manner designed for contemporaneous perception.”  The court then aptly pointed out that the downloading of a file was more accurately characterized as the reproduction of a music file, i.e. a copy. As the court points out, this is consistent with the holdings in the peer-to-peer file sharing cases which found that the downloading of copyrighted music files violated the plaintiff’s reproduction rights.   The court thus declined to rethink downloads and maintained, contrary to ASCAP’s creative imagining, that downloads are nothing like radio broadcasts or digital streams. A download is simply the transfer of a file from one location (the iTunes server) to another (my laptop).  Like the sale of a CD, the one who transfers the file pays what is known as a mechanical license fee to do so. In the digital realm it’s called a digital phonorecord delivery (DPD) license.   Unfortunately for ASCAP, mechanical license fees are paid to the Harry Fox Agency.   Read the full opinion here   [...]

URLs Gone Bad


Posted by Stephen M. Nipper at 03:55 PM

Erik J. Heels has an excellent post (Uncool: USPTO Breaks Millions Of Patent URLs Without Public Notice) talking about how the USPTO broke URL links to patents and trademarks over the weekend and how it is making him pull his hair out.  Definitely worth a read!

Another example of rising restriction requirements?


Posted by Kristen Cichocki at 09:14 PMAs some of you may know, I’m one of the parachute packers here at RethinkIP. That means I’m usually behind the scenes updating the RSS Mojo with the latest news from the USPTO.  But, I’m also a law student with a slight obsession for everything IP and sometimes I just gotta lend my two cents.   In a recent post Stephen Nipper revealed he was spending some time saying “hmm” over the possibility that the recent drop in the allowance rate and rising restriction requirements might indeed be evidence of a secret change to official USPTO policy.   Well now it’s official, at least for applications containing nucleotide sequences.    On March 12th the USPTO issued a pre-OG notice indicating it is rescinding the partial waiver of requirements and unity of invention it provided in November 1996 for applications that included claims for isolated and purified DNA fragments and other certain DNA fragment combinations.   In 1996, the PTO remarked that it needed to “simplify and standardize” its policies and procedures in order to promote the growth of the biotech industry. The waiver allowed applicants to claim up to ten independent and distinct nucleotide sequences in one application.    The numbers indicate the waiver worked. According to statistics from the Georgetown University DNA database, in 1996 there were a little over 1,500 DNA-based patents issued in that year. At its peak in 2001, 4,500 DNA-based patents issued. According to Georgetown, there are over 37,000 DNA-based patents that have issued to date. That’s of course not counting all those pending applications claiming nucleotide sequences (as of today, there are over 41,000 DNA-based applications in the pipeline).   Sheer volume and advances over the past ten years in biotechnology have obviously forced the PTO to rethink its policy.   Might the PTO be forced to do the same thing in other areas where patents have been proliferating at high rates (e.g. software and business method patents)?  I look forward to your comments.     [...]

Chicago. Tomorrow Night. Blogger Bar Crawl


Posted by Stephen M. Nipper at 09:38 AM

Matt, Doug and I are going to be in Chicago the next few days for ABA TechShow. Tomorrow night at least one of us will be participating in the TechShow Blogger Bar Crawl that Matt Homann is putting on. If you're an attorney, blogger, law student, et al...and will be in Chicago, look us up.

Federal Circuit Summaries, Practice Alerts


Posted by Douglas Sorocco at 05:27 PM

Want to follow Federal Circuit caselaw but don’t have time to read lengthy case summaries? has an RSS/e-mail feed for you.

1. Case Review Summaries (provides summaries of the ten most recent case reviews)

(image) RSS:

E-mail:Click for subscription form

2. Practice alerts (provides all Practice Alerts)

(image) RSS:

E-mail: Click for subscription form

New Search Tool Released


Posted by Douglas Sorocco at 06:29 PM

The master plan for the site includes several web features designed to deliver patent caselaw information in a more effective manner.  The first - the GimmeTen! feature - has quickly become the most popular page on the site...and for good reason.  Not familiar with it?  Simply bookmark and visit regularly.  That page always provides concise summaries of the ten most recently posted case reviews.  We're confident you'll quickly be hooked.

Today we announce the second feature in our bag of tricks - (image) the travelling search engine.  By following the steps below, you'll be able to search the site from anywhere on the web.

The best part is the simplicity -- 5 easy steps (4 for most people).  Five minutes tops.

1.  Make sure you're using either Internet Explorer 7 or Firefox 2.0 as your browser.  If you're not, download the latest IE here or Firefox here (both are free).  For the record, is optimized for Firefox.

2.  Start your browser.

3.  Visit

4.  Pull down the drop-down search box in the upper right hand corner and select "Add" (in Firefox) or select "" with the gold star next to it (in IE, see image at right).

5.  Surf the web.  Whenever you want to search the site, simply enter a search string in the box in the right hand corner, pull down the list, select, and hit return.  (image) You can do this from any page on the web...and you'll immediately be transported to a listing of search results from the site.

I've quickly gotten used to searching by party name or full case name as I'm reading on the web.  This little trick has changed my surfing habits for the's a wonderfully efficient way to find information quickly.  We hope you find it useful as well.

As always, if you have any comments or suggestions, please let us know.  You can e-mail Matt directly at jmb @


Cichocki on USPTO News


Posted by Stephen M. Nipper at 11:17 PM

One of my favorite motivational stories is the story of POW Charlie Plumb entitled "Packing Parachutes."

The three of us at RethinkIP likewise have people who pack our parachutes...people who work behind the scenes helping us do the things we do. One of those people is Western New England College School of Law 2L Kristen Cichocki. Kristen, also works as a part-time legal intern for O'Shea, Getz & Kosakowski, P.C. a patent firm in Springfield, MA. Her current project is researching and writing a law review article (or what I hope will be a law review article) on licensing frameworks for digitizing public libraries. She can be reached at kristen.cichocki [at] if any of you have insight for her...

Kristen has been helping us keep RSS Mojo updated by making blog posts every now and then.

What is RSS Mojo? It is a service where we monitor the USPTO home page and News and Notices page for new news items and then we create posts on the RSS Mojo blog pointing to the new items. The blog is linked to both email delivery (sign up box below) and RSS options, allowing practitioners to easily follow what's new at the USPTO.

Someday the USPTO will release RSS feeds...until then, let us (Kristin) do the work for you.

Restriction Requirements on the Rise?


Posted by Stephen M. Nipper at 12:53 PM

I try not to rant here too often, but seeing posts on the allowance rate dropping (within a few years) from 70+% to ~50% and questions regarding whether there has been a secret change to official USPTO policy regarding examination and allowance makes me say “hmm…..”

One thing I’ve been noticing is that the number of restriction requirements appears to be on the rise. 

I don’t mind restriction requirements that are appropriate…there is a reason for them.  But, I have to admit, I’m having a hard time believing some of the reasons I’ve been seeing recently.  For instance, the one I received earlier this week…the entire support for the rejection?  “The species are distinct because each of them has a distinct feature.”  No reasons provided.  No examples to support conclusions.  Just a blanket statement that (essentially) the embodiments each have a distinct feature and thus they must be patentably distinct species.  Argh.

Is it just me???  Anyone else seeing more restriction requirements than they used to?  The comments are open.

Rethinking the backlog


Posted by J Matthew Buchanan at 02:13 PMDoug and I were fortunate to be invited to speak at the recent Corporate Patent Congress in New York City.  Even without our meeting with Bill Patry at Google regarding his rethinking of the legal treatise and the quick jaunt we made to the Apple Store, the trip would have been an amazing success because the conference itself was very rewarding. The small group attending the conference packed a punch - generating some amazing discussions on all things patent law, including legislative patent reform efforts and recent judicial activity.  Thanks, in large part, to the wonderful pairing of Nick Godici (ex-Commissioner for Patents ) and John Love (current Deputy Commissioner for Patent Examination Policy), a significant portion of the discussions focused on Patent and Trademark Office efforts to implement change. In his talk, Deputy Commissioner Love presented the graph at right that shows the dramatic dropoff in the allowance rate over the last several years.  In explaining the dropoff, he stressed several new "quality initiatives" being implemented at the Office, including the mysterious and frequently-fatal "second pair of eyes" policy (have you been caught by this one yet?).  Deputy Commissioner Love clearly draws a connection between the allowance rate dropoff and PTO examination "quality initiatives." But, to me, that graph shows something entirely different.  Perhaps because I've yet to see a dramatic increase in examination quality, I think the graph really highlights the degree of control the Office has over the backlog of applications. Think about it.  Have you abandoned more cases over the last couple years as you've fought the so-called allowance rate?  Or have you simply pursued other prosecution options, such as Pre-Appeal Brief Conferences, full appeals, and continuation filings?  I'd be surprised if the abandonment rate has increased as dramatically over the last couple years.  If it hasn't, as I suspect, the allowance rate dropoff directly feeds into the backlog.  Here's the troublesome part.  The application backlog can be, and has been, used for a variety of political purposes, including anti-fee diversion, outsourcing, inter-Office partnerships, and administrative rule changes.  Perhaps more troublesome is the fact that the application backlog is often cited as evidence of the need for major patent policy changes (think the "alternative patent products" mentioned in the strategic plan and even several of the proposed legislative changes).  It's even possible that the Supreme Court might look at the backlog as it considers its stance on obviousness in the KSR v. Teleflex case. So what's the point?  Simple...policy-makers, including legislators, administrators, and judges, need to be careful out there.  Before justifying any major policy change with the growing backlog, a thorough examination of the reasons for its growth should be conducted.  Heck, a congressional investigation might be warranted.  They might just find that all that glitters is not gold.     [...]

Odd new USPTO domain


Posted by Stephen M. Nipper at 12:00 PM

Anyone have an idea what’s up with the page?  If you click on that link, you get this page:


It also appears that there is an OED page: and IP Newsflash’s links to BPAI decisions use a domain (with an interesting FOIA (Freedom of Information Act) subfolder) (i.e.,

Perhaps this is part of the open application/peer review project?  [the comments are open]

New Magazine Covers Federal Circuit Patent Decisions


Posted by Stephen M. Nipper at 11:28 AM (Matt/Doug/I) announced earlier today the availability of a free preview issue (The Resolution) of our quarterly magazine, The Reader.  Download the .pdf here.


The Resolution will give you a sneak-peak at the features of the magazine.  It's jam-packed with all sorts of patent-caselaw goodness, including a 'Trend Spotting' article, a featured case review, prosecution- and litigation-focused digests, chronological and alphabetical listings of cases from last quarter (including summaries), and a fun "Quotables" section that includes some of our favorite quotes from cases issued during last quarter.

For this issue, we've even included a brief note about the story behind the name and domain.

We think you'll agree that the magazine is an exciting and effective new tool for staying current on patent caselaw developments.

Of course, the free preview issue includes subscription details for the magazine.  The site will be ready to accept subscription payments starting tomorrow.

Please do download our first copy and let us know what you think.

RTIP'rs Visit Google


Posted by Douglas Sorocco at 11:00 AM

(image) Well, I almost feel like Robert Scoble... but without a videocamera in hand, a gadzillion number of readers, or a red couch.

Matt and I had the opportunity yesterday to visit Google's NYC offices in lower Manhattan.  It was an amazing experience - not just because we were almost run down by scooters and got to witness fine sushi creations being crafted by a renown sushi chef - rather, we were able to engage in a very substantive conversation on the process of rethinking copyright issues and how intellectual property information and tools will be radically different in the coming years. 

Oh yeah, the game room was wicked cool as well.  But - the conversation still ruled.

Our host at Google was Bill Patry, Senior Copyright Counsel at Google and former Copyright Counsel to the U.S. House of Representatives.  Matt did a mini-review of his new copyright treatise on Rethink(IP) a week ago and it was great to be able to sit down and chat with Bill about his thoughts on rethinking issues near and dear to our hearts - most notably upturning the way in which IP information, content and tools are delivered -- the premise and underpinnings of

Matt will begin teasing y'all with some of our thoughts on the legal treatise soon.  In the meantime, suffice it to say that Google and Bill, in particular, will be visibly leading a revolution in how copyright law impacts our day to day lives.  As Bill said, and I am paraphrasing badly here, "... copyright cannot be staid and inflexible, it has to move and breathe and be accepting of new voices and radical forms of communication..." 

We couldn't agree more and believe that such notions should also be applied to other forms of intellectual property - especially the patent grant and the law interpreting and construing that little monopoly everyone loves. 

Bill's blog - The Patry Copyright Blog - is a companion of sorts to his new treatise and I would recommend that every IP thought leader subscribe immediately. When your West rep calls - seriously consider purchasing it for your library - you will not be disappointed.

While we were wowed by the colors, games and atmosphere at Google NYC -- it was the substance of the conversation and the enthusiasm for change that really got us wired up.

Thanks Bill for a great morning - and we look forward to engaging you in the debate.

Christmas Morning in January


Posted by Douglas Sorocco at 03:25 PM

While I love my Toshiba R15... my newest geek purchase is taking way too long to arrive for my taste (hint: its model number is X60 and it is made by Lenovo).  Sheesh - I ordered it yesterday and it still hasn't shipped yet.  =)

What does a guy have to do?

Rethinking the law treatise - Patry leads a revolution


Posted by J Matthew Buchanan at 11:00 AMBill Patry, Senior Copyright Counsel at Google and former Copyright Counsel to the U.S. House of Representatives, has done some major rethinking.  And by major, I mean, um....major. Bill just completed a massive, seven year solo effort to craft the ultimate treatise on copyright law.  He sent me an e-mail last week announcing the availability of the treatise, and described it as "close to 6,000 pages" in "single space, printed form." Six thousand pages?  Solo effort?  Yep...just ask Bill:  "I did 100% of the research and writing, never using assistants of any kind. "  Holy cats. Surely Patry on Copyright will prove valuable simply because of its extensive treatment of all things copyright.  But the actual printed treatise is just the beginning.  You see, Bill didn't just sit down for the last seven years and dutifully document current copyright law.  Nope...he didn't stop with that conventional thinking.  He took it a bit farther and did a bit of rethinking. And the copyright world stands to benefit tremendously from his effort. How so?  Consider this:  Bill's working to back the treatise with a few web resources that, I think, will prove to be the real value in the deal.  First, he's launching the Patry Treatise Blog (uh oh, he's got the bug!) that promises to make the treatise interactive. The idea here, according to Bill, is to break out of the one-way nature of the traditional treatise and open the work up to the community....really turn it into a living, breathing document that reflects multiple viewpoints and sources on various points of law.  So, go ahead, tell Bill about the typo you found...or, better yet, tell him about "things you think should have been discussed but weren’t, or were discussed in far too brief or dismissive a way." Books backed by websites aren't new, of course.  But the idea of a treatise backed by an interactive community resource?  That's some major rethinking that, I think, could prove quite powerful. Bill doesn't expect to stop there, though.  He's also hopeful that a website containing the complete legislative history of the 1976 Act can be launched and integrated into the treatise and blog.  Can you imagine the interactive community plugged into a web-based, easily-navigated version of the legislative history behind the major copyright act?  Now that's powerful. Keep an eye on this project.  I think Bill's onto something big. Patry on Copyright is available from Thomson/West.  If you're in the market for a comprehensive copyright work, Bill's treatise - thanks to his rethinking - promises to deliver the most bang for the buck.    [...]

Where there's passion, there's usually excellence


Posted by J Matthew Buchanan at 02:04 PM

When I was growing up, my father was always offering me little life lessons.  In between the tidbits like “you can’t go wrong with Craftsman,” he’d throw in some real zingers.  As an adult, I’ve really grown to appreciate the (image) zingers, and have found myself passing them along more and more (my wife thinks I sound a bit like Kotter with his frequent stories about his Uncle Kermit, er, Max, er….).

One of my favorite zingers is this little play on the old “where there’s smoke….” axiom:  “Where there’s passion, there’s usually excellence.” 

I’ve learned to appreciate the value of that one time and again over the years…in all aspects of life.  Basically, it’s a shortcut (he had plenty of those, too, much to my mother’s chagrin).  While excellence is something that is extremely difficult to measure based on outcomes, passion is easily perceived and, as dad’s advice tells us, it’s a darn good predictor of excellence.

Truly measuring somebody or something for excellence involves a significant amount of time.  It takes a keen eye and the ability to judge without bias.  There’s no doubt that it’s a tough thing to do.  Heck, just look at baseball – even with its numbers driven assessments of careers, we still get carried away with debate about whether certain players are or were excellent (thoughts on Barry Bonds, anyone?).

But passion is something completely different.  It can’t be hidden.  It reveals itself immediately.  Passionate people exude passion.  No measurement is necessary.  Your gut assesses passion, and it does it very quickly. 

So there’s the shortcut.  If you want excellence – in a house painter, an author, or, egads, a lawyer – but you don’t have the time or desire to actually measure excellence, go ahead and take a shortcut:  look for passion.  Let your gut lead the way.  More often than not, it will point you directly toward excellence.