PCT Direct

March 31, 2015

DIrect

The Israel Patent Office has announces an experimental service called “PCT Direct”.

PCT Direct is intended to make the process more efficient and to increase the value of the International Search Report (ISR) and International Preliminary Examination Report (IPER) that the Israel Patent Office produces as a Searching and Examining Authority of the PCT (Patent Convention Treaty).

The service is aimed at PCT applications claiming priority from an Israel Application and the system is designed to help respond to the Notice Prior to Examination of the Priority Application

The Applicant will be able to relate to all issues in the Notice Prior to Examination. The response is, however, not part of the PCT request. It seems that the idea is to file a PCT request as a response to a Notice Prior to Examination, submitting a marked up and clean copy, details of other prior art known to examiner and details of first publication.

If the art cited by the Applicant is of value, half the search fees will be refunded.

The PCT response and interaction will be considered as a response to the prosecution of the priority document if not yet allowed.

Apparently the Israel Patent Office is only the second authority, after the EPO, to offer this exciting new service.

 

COMMENT

I am confused as to the point and purpose of this development.

abbreviation

I have an aversion to abbreviations.  PCT, IPER, ISEA, ISR – at least the Talmudists had the excuse that scribes wrote by hand and parchment was expensive. Nevertheless, WIPO (World Intellectual Property Organization) uses them, so I suppose we must conform.

The EPO’s description of the PCT Direct service may be found here.

More substantively, The PCT application should be filed within 12 months of priority. Israel Applications publish automatically at 18 months, so one wonders what first publication is being considered here.

I think that this initiative is designed for applications that are made special and examined immediately, either due to them being green applications that are environmentally friendly, or due to applicant petitioning based on age, suspected infringement and the like. It is possible that this has ramifications for a PCT application claiming priority from an earlier PCT application.

It also seems that the applicant need not actively file PCT responses in the parent file but can rely on the system doing so automatically.

Not too long ago, the search report of the PCT was considered as something of little value and was often ignored by examiners who examined to grant patents.  Then came the Patent Prosecution Highway, and then the Superhighway. I think this further development is designed to demonstrate that the Israel Search and Examining Authority, is willing to grant patents based on their PCT work, as is, apparently, the EPO and to create additional trust in the system. Hopefully this will translate into less duplication and a faster, more efficient, high quality service.

This is, however, speculation.

Readers who can briefly summarize what PCT Direct is all are about are cordially invited to do so.


Patent Office Closures for Pesach

March 26, 2015

pesach cleaning

The Israel Patent Office will be closed from 3rd April 2015 to 11 April 2015 for Pesach (Passover), and will open again for business on 12 April 2015.

Deadlines falling during the period that the Israel Patent Office is closed are automatically extended until 12 April 2015.

However, trademarks and PCT Applications may be filed on line during the festival and will receive the date that they are filed. Notwithstanding this, according to discussion with Dr Michael Bart, the USPTO now accepts PCT applications that are filed late due to Israel Patent Office closures.


Sony Clamps Down on Pirate Computer Games

March 26, 2015

Pirate
Sony Entertainment sued Azam Gever claiming copyright infringement and unjust enrichment, alleging that Gever’s computer shop “McKan Computers” on the main road through Osefiya sold fake disks with games for the Sony Playstation console.
In his defense, Gever claimed to be ignorant of the fact that the disks he was selling were not originals. If Gever could successfully convince that he was unwittingly distributing fake disks, he would not be held responsible. If, however, this defense collapsed, he would be held responsible for damages.
Sony claimed to have copyright in the Playstation and Playstation 2, and in software for the Playstation. They also claimed to own trademarks 95025 and 95026 for Playstation. Sony Entertainment Europe was responsible for distributing in Europe, the Middle East, Africa and the Pacific Rim and franchised distribution rights for the software within those territories, including Israel.
Playstation programs can only be played using the Playstation interface due to special encryption. Any copying, burning to disk of a Playstation game will, inter alia, include copying of the encryption which is copyright infringement of Sony’s copyright. Sony claimed that they are in a perpetual war to prevent their software from being pirated, and that they have spent enormous sums in advertising and promoting the console, They have copyright notices on the disks, on the packages, and appearing on screen.
The defendant did not deny selling pirate CDs but denied knowing that they were pirate copies. Sony sent a private investigator to the shop to see what was being sold. The private investigator and his son testified that they were both independently told that the programs were copies, and that the owner had shown a box of bundles of 50 disks, containing 3 or 4 copies of each game. The private investigator testified that he bought five different games at 10 shekels ($2.50) each, paid 50 Shekels and received a tax invoice for 50 Shekels that indicated thatit was for Sony II disks. The private investigator filmed the visit and submitted the footage as an exhibit. The games purchased included Beyond Good and Evil, Dragon’s Quest, God’s hand, Spy Hunter, and Fifa 2013.
The Plaintiff alleged that inspection of the disks showed clearly that they were fakes that infringed Sony’s Copyright since they were not in cardboard packages with shrink-wrapped cellophane or new DVD boxes and did not include instruction booklets. Unlike the originals, the disks did not have pictures on them and were not stamped with Sony’s logo and copyright notice. Sony sent a Cease & Desist letter and asked for the pirated disks to be handed over and for accounts to be produced for calculating profits and infringement revenue. The parties were, however, unable to come to an amicable settlement and so this case was filed. In the statement of case, Gever was accused of copying or creating fraudulent copies, selling or offering to sell these in the course of his business, offering to sell and holding fake copies thereby infringing the copyright, without permission of Sony and without compensating Sony.
In addition to the copyright charges, Sony alleged unjust enrichment under the law of Unjust Enrichment 1979 and various trade related torts for damaging Sony’s reputation.
Sony sued for compulsory damages of 100,000 Shekels per infringement under Section 56a of the Copyright Law 2007. Claiming years of fraud, Sony requested increased damages of 150,000 Shekels and also applied for an injunction against Gever to prevent him from selling fake disks directly or indirectly.
Gever laconically acknowledged ownership of the shop and that he’d sold programs against the tax invoice, but denied selling or trading in fake software. Gever further alleged that he’d bring expert witness that the software was genuine.
In the preliminary hearing, Gever repeated that the disks were genuine and that he was unaware of “the material”. In a second preliminary hearing he again requested to examine the disks. After the parties held a brief discussion, the attorney for the plaintiff stated that the defendant claims that he sells computers, disks is a mere sideline that produces at most, 1% of income and that if it should transpire that the disks are indeed fake, he was unaware of this. In Gever’s own statement under cross-examination, he complained that he wasn’t warned, that he only sells a handful of disks each month and never claimed that they were originals. His lawyer clarified that the intention was to state that his client was unaware that the disks were not real. Meanwhile, the private investigator testified that there were a number of disks with the name of the program marked in permanent ink and that when discussing Playstation 3, the vendor had stated that copying it was problematic. Gever claimed that there weren’t more than 30 disks and that this wasn’t a commercial number. He admitted selling computers for 13 years and that he had sold Playstations for at least a decade, but claimed to sell very little software.
Under cross-examination, Gever claimed to obtain and sell original software on a request basis and to sell a handful of fakes each month. Some his brother supplied, some a friend, not sure from where, some he’d copied himself. He denied selling 60 a year, or 600 over the decade. He considered this non-commercial as he had a limited range of maybe 20 games.
The plaintiff requested to correct the statement of case to request 250,000 Shekels damages, alleging that even at the rate of 5 disks a month, this adds up to hundreds of disks over a decade. (I feel a lawyer joke coming on. It seems that neither the judge, not the attorneys were able to do the calculation).
The defendant objected to the sum being corrected. He also alleged that for sales prior to the new copyright law coming into effect in 2008, the maximum statutory damage is 10,000 Shekels (or 20,000 Shekels for willful infringement.

RULING
Despite Regulation 92 of the Civil Court Procedures 1984 allowing extensive corrections to the statement of case to enable the point of contention to be clarified, correcting the sum after the hearing and before ruling is not allowed as it does nothing to clarify the legal issues and will merely protract the proceedings. The plaintiffs alleged that Gever had sold tens if not hundreds of fakes over a period of years and nothing had changed, so the maximum sum claimed remains 150,000 Shekels.
Judge Weinstein ruled that merely selling fake disks was insufficient to be responsible, but the seller had to be aware that they were fakes. In this instance, some he’d scanned himself, others were supplied from an unknown source so it seems clear that he was aware. Furthermore, a computer seller would be expected to be able to differentiate between originals and fakes. The price of 10 Shekels a game was also a fair indication that they were fake.
The private investigator’s footage showed boxes of 50 or more games, and this was a commercial number. The private investigator’s testimony was sufficient to indicate that the vendor was aware that the goods were fake. However, the issue is moot as during cross-examination he admitted copying some of the programs himself.
The problem, was, as always, the burden of proof required. After humming and hawing about the need to warn others not to copy, the admitted sales of small amounts over time and the evidence of 5 separate games, Ms Weinstein ruled damages of 50,000 Shekels and costs of 10,000 Shekels.
52260-01-14 Sony vs. Gever, Ruling Judge Weinstein 16 March 2015

COMMENT
The disks were sold in Osefiya by Shfaram. In the past, a DVD copying factory was discovered in Kiryat Ata.
Personally, I am inclined to believe that Gever sold very little software. Why should anyone not picky about purchasing originals pay 10 shekels if blank DVDs cost half a shekel and everyone has a disk burner?
Not allowing the sum claimed to be increased is one thing, but I think that on the burden of evidence and not requiring actual damages, but statutory damages, Ms Weinstein had sufficient evidence to rule the 150,000 Shekels damages. Not unreasonable for a sideline operating 10 years.


Israel Patent Office Circular on 3D Trademarks

March 18, 2015

The Israel Patent Law 1967 is unequivocal in that three dimensional trademarks are registerable.

In the past, attempts to register the shape of objects and containers as trademarks was frowned upon by the Israel Patent and Trademark Office. Then, in 11487/03 August Storck KG vs. Alfa Intuit Food Products LTD, the Supreme Court ruled that the shape of the distinctive Toffiffee toffee and chocolate coated hazelnut snack could be registered as a design.

Since then, there have been a number of rulings (for and against) concerning trademark applications for  distinctive packaging, particularly for liquor and perfume bottles, and for various other objects such as Rubik’s cube.

The Israel Patent Office has now published a Commissioner’s Circular (no 032/2015) that attempts to provide clarity to this issue.

Essentially, three dimensional packaging or product shape should be protected with design registrations.

Consequently, inherent distinctiveness is insufficient grounds for registration.  However:

  1. if the three dimensional image serves as a trademark,
  2. is not significantly aesthetic or functional, and,
  3. through use, has acquired distinctiveness, it may be registered.

Since trademark registration does not provide protection to different elements of a composite mark, if a three dimensional representation includes the company’s name prominently, this may be used to enable registration without consideration of the three requirements above.

If allowable, the fact that the image is three dimensional will be stated.

The Circular comes into immediate effect and cancels previous circular MN 61, from 29 April 2008.

COMMENT

As guidelines, these are very sensible. However, one imagines there will be lots of arguments as to whether in specific cases, a three dimensional image serves as a trademark or not. Whether something is ‘significantly aesthetic or functional’ leaves a lot of grey areas, and the concept of acquired distinctiveness is also a difficult issue to quantify.

Substantially functional marks are related to in a decision concerning rifle sights. In a controversial ruling, the Rubik Cube was registered. In another ruling that I was less than happy with, the Crocs beach clog was registered.

Many rulings relate to bottle designs. For example the Kremlyovskaya vodka bottleEnergy Brands, Contreau, Fanta and Absolut Vodka. Also see here. Rulings for other containers include one for a cigarette box.

I suspect that we haven’t heard the last word on this subject.


IL 142809 to Pharmacia Successfully Opposed by Teva Pharmaceuticals

March 18, 2015

R&R          R&R2

IL 142809 to Pharmacia AB was submitted on 25 April 2001 as a national phase entry of PCT/SE/99/02052 “NEW CONTROLLED RELEASE BEAD, A METHOD OF PRODUCING THE SAME AND MULTIPLE UNIT FORMULATION COMPRISING IT”. This published as WO 0027364 on 11 November 1999. The application claims priority from another PCT application filed a year earlier.
On allowance in 2006, the patent published for opposition purposes and on 18 May 2006 Teva filed an Opposition, submitting a detailed statement of case on 18 October 2006. On 12 march 2007 Pharmacia filed a counter-statement. Both sides submitted evidence, held a hearing before then Deputy Commissioner Noah Shalev Shmulovich and then filed their summaries.

As per regulation 202a, the current commissioner, Asa Kling ruled on the opposition based on the material of record.

The application is directed to a bead with controlled release of active ingredients, a method of manufacture and a multi-part formulation that includes the active ingredients. Essentially, the bead comprises a multilayer structure that includes a soluble core covered with non-soluble coatings, and the patent has 23 claims, two of which are independent.

Claim 1 is as follows:

 A controlled release bead comprising:
A core unit of a substantially water-soluble or water-swellable inert material;
A first layer on the core unit of a substantially water-insoluble polymer;
A second layer covering the first layer and containing an active ingredient; and
A third layer of polymer on the second layer effective for controlled release of the active ingredient,
Wherein said first layer is adapted to control water penetration into the core.

Claims 2-7 recite the various lawyers and their formulations and thicknesses. Claim 8 is a Markush claim for various active ingredients. Claims 9and 10 claim different forms of the active ingredient. Claim 10 claims use in vitro. Claims 11-14 claim different materials for the first three coatings. Claim 15 provides dimensions for the core and claims 16 and 17 claim multidose structures.

Claim 18 recites a corresponding method as follows:

 A method of producing a controlled release bead, which method comprises the steps of:
providing a core unit of a substantially water-soluble or water swellable material;
applying a first layer of a substantially water-insoluble polymer to said core;
applying onto said first layer, a second layer comprising an active ingredient and optionally a polymer binder; and
applying onto said second layer, a third polymer layer effective for controlled release of the active ingredient;
Wherein the amount of material in said first is selected to provide a layer thickness that permits control of water penetration into the core.

Claims 19, 21 and 23 claim use of the bead for a treatment for various diseases and claims `19 and 21 claim the active ingredient as tolderene or a salt thereof.

Grounds for Opposition
The opposition was based on lack of inventive step (obviousness) under section 5 of the Israel Patent Law 1967. In addition, Teva claimed that some of the claims lack utility contrary to Section 3, that some of the claims lack support from the specification in contravention to Section 13 and the Application is laconic and contravenes Section 12.
Pharmacia argued that claiming that the specification was laconic was an inadmissible widening of the Statement of Case, but the Commissioner, Asa Kling felt that the alleged inadequacy of the specification was inherent in the Statement of Case and that Pharmacia related to the issue so he considered it admissible.
As to inventive step, the Commissioner explained that if at the time of filing, the claimed invention was a simple extrapolation that could be considered as a simple development within the field and allowing a patent for it would prevent progress, it would be incorrect to allow a patent.
The Commissioner noted that both sides accepted that beads allowing controlled release of active ingredients that comprised a miscible or non-miscible core, a sealcoat, layers of active ingredients and additional layers were known at the filing date. The sealcoat serves to protect the active ingredient from reaction with the core and may be water impervious or slightly pervious. In the present invention such water penetration was controlled but in the prior art it was less controlled.

Not that kind of seal coat

Not that kind of seal coat

The present invention differs from the prior art in two ways: (i) the sealcoat is miscible in the prior art but is immiscible in the present invention, and (ii) the seal coat of the present invention is rather thicker than usual, but the thickness is not mentioned in the claim-set.

Teva argued that since the core in this case is impervious the sealcoat is superfluous and non-functional and there is no effective difference from the core of the present invention and that of the prior art.

Teva argued that in the priority document this was stated explicitly:

“Each bead comprises (i) a core unit of a water-soluble, water-swellable or water-insoluble inert material (having a size of about 0.05 to 2 about 2 mm), such as e.g. a sucrose sphere; (ii) a first layer on the core of a substantially water-insoluble (often hydrophilic) polymer (this layer may be omitted in the case of an insoluble core, such as e.g. of silicon dioxide), (iii) a second layer of a water-soluble polymer having an active ingredient dissolved or dispersed therein, and (iv) a third polymer layer effective for controlled release of the active ingredient (e.g. a water-insoluble polymer in combination with a water-soluble polymer)”. (WO0012069 page 6 line 33 to page 7 line 6). This point was also clear from US 6,770,295 to the same applicants.

The Applicant countered that the opposer’s explanation of the phrase “control water penetration into the core” was a misrepresentation and the correct explanation is found on page 2 lines 23-25 of the Application and only rates to beads wherein the water penetration to the core is impeded in a controlled manner and excludes beads where the core is protected by an impervious layer. The Applicant argued that the claim of lack of inventive step was based on this wrong interpretation.  In contradistinction to immiscible cores of the prior art in the present invention the core is miscible and is protected by a partial barrier sealcoat which allows controlled release.
The applicant could not explain the working of the sealcoat and how it inhibited release of the active ingredient but argued that the phenomenon exists and this is sufficient for both enablement and inventive step.
It seems therefore, that the key question is whether an immiscible core or a miscible core protected by an immiscible coating are equivalent or if a miscible core protected by an immiscible coating can be considered inventive over an immiscible core. Citing 345/87 Hughes Aircraft vs. State of Israel, it is accepted that a mere scintilla of invention is sufficient, and the question is whether this exists in the present case.

Utility
Teva argued that the utility was not demonstrated in contravention of Section 3 which allows patents for inventions that are new, useful, industrially applicable and non-obvious.
In oppositions, the onus is on the applicant to show utility. Citing 665/84 Sanofi vs, Unipharm the commissioner stated that the application as field has to provide a basis for utility and, if challenged, the Applicant has to prove utility during opposition proceedings. IN enforcement and cancellation proceedings the burden of proof switches and the challenger has to show a lack of utility. Consequently, the Commissioner ruled that without proof of usefulness a patent should not be granted.

According to the Specification, there are three advantages:

  • The claimed bead prevents the soluble core from serving as a reservoir of the active ingredient and extending the controlled release period
  • It reduces the likelihood of the core material releasing active ingredients and reduces the atmospheric pressure (specific vapour pressure?) and prevents the core from swelling
  • It reduces the initial phase during which there is no release of the active ingredient or only minimal release

According to the applicant these advantages transcend specific active ingredients.

The Opposer argued that these advantages are claimed for the specific active ingredient and for other non-specified active ingredients without any rationale or evidence.

Evidence
The evidence from each side consisted of expert opinions. Teva produced an expert opinion from Professor Golomb, and Pharmacia releid on expert opinions from Professor Wilson and from a Professor Walther who attempted to reproduce the experiments described in the application.
Professor Walther conducted a number of experiments to demonstrate that claimed in the first example for different active biological compounds. These, together with raw data were appended to Professor Walther’s affidavit at the Commissioner’s request.
There were differences between the raw data and the final conclusions with regard to what active species showed the desired effects and whether a heat treatment affected the results. The Commissioner felt that the discrepancies required explanation.
The Applicant claimed that Tolterodine exhibited the desired behavior, as did Reboxetine and cona, theopheylline and Carbamazepine. This was held sufficient to show that the behavior was a general phenomenon.
The tests related to a core with three coatings whereas the specification proposed a fourth optional coating. This, together with other discrepancies were considered to show light on the utility.
The thick initial layer did show slow release of the Tolterodine in a manner that was close to linear.
In the Application, after three hours some 70% of the active ingredient ws released, but in Dr Walther’s corroborative experiments, after this time lapse, only 43% of the active ingredient had been released.
When comparing Professor Walther’s results with the experiments in the specification it appears that the applicant had problems repeating their own experiments. The problem seems to be that Professor Walther simplified the experimental design and still could not achieve meaningful results. He was able to show that a thicker coating impeded release of the active ingredient but not in a qualifiable and repeatable manner.
As far as Tolterodine, the preferred active ingredient was concerned, Professor Walther was unable to show a correlation between thickness and the rate of release and was unable to repeat the examples in the Application. The Commissioner considered the lack of repeatability an reproducibility as undermining the claimed utility and barring the issuance of a patent.
Adequacy of the Specification
Section 12 requires that the specification be adequate to allow persons of the art to implement the invention. The rationale for granting a patent is in exchange for teaching something useful and failure to teach something sufficiently to allow the teaching to be repeated is considered as invalidating the application: “The sufficiency of a specification is a question of fact and necessarily depends upon the nature of the invention and attributes of the skilled person.” ( Hollister [1993] R.P.C. 7 para. 10-14). In this instance, the purpose of the patent as specified in the priority document was to enable the controlled release of the active ingredient at a predetermined rate over the shelf life of the product.
“An important aspect of all controlled release dosage forms relates to the need for consistent drug release between dose units prepared in the same and/or in different production batches, and throughout the shelf-life of the finished product.”

The surelease polymer specified in the specification and used by Professor Walther in his experiments was supposed to provide repeatable and reproducible results:

“In one embodiment, the invention provides a commercial-scale process for manufacture of controlled-release dosage units. The process comprises co-formulating tolterodine or a tolterodine-related compound as an active drug and a pharmaceutically acceptable polymer-based release-controlling component. … more preferably substantially all of the polymer-based release-controlling component used in the process has an age, at time of dosage unit manufacture, which varies by not more than about 180 days, preferably not more than about 120 days, and more preferably not more than about 90 days.”

Professor Walther was unable to show this control. Under cross-examination he stated that:

“So what we know is that Surelease has lot to lot variability. So one batch of Surelease may perform slightly different from another batch of Surelease. That is an effect that the suppliers do know and understand and that is something that, as part of any formulation development, you would establish how robust a product is towards variability and providing sufficient specifications then on it.”

The problem is that this variable is not described in the specification, rendering the claimed invention not enabled.
The Commissioner ruled that the claimed invention does not have demonstrable superiority, lacked sufficient disclosure and enablement and that no inventive step was shown. Consequently the application was refused.

COMMENT
Active ingredients are released from the surface of solids. This is true for components that leach out and for components that are released when a carrier dissolves.
As particles shrink, the surface area to volume ratio increases and the rate of dissolution increases. Having a non-functioning core surrounded with a coating containing active ingredients is to ensure that the effective surface area remains more or less constant and thus the active ingredients are released at a constant rate.
The above explanation is obvious to anyone with a background of materials science and chemistry.
Drugs are more effective if the dosage is released slowly at a constant and predictable rate.
The present invention seems to be based on the premise that over time the core will absorb the active ingredient and that a coated absorbent core is better than a non-absorbent one.
The application is based on Tolterodine as an active material, but other pharmaceutical compounds may be expected to behave in the same way.
Of course, using the same binder and beads of constant diameter won’t give reproducible results if there are other significant variables. The problem here is that the Applicant’s own attempts to demonstrate the efficacy of the claimed invention failed. In such circumstances, the Commissioner couldn’t really have come to a different conclusion than that the application was deeply flawed as the person of the art selected by the applicant was unable to reproduce the results.

The previous Deputy Commissioner resigned four years ago. Obviously this was only one case of many that the current commissioner and his deputy or adjudicator had to rule on. Nevertheless, it seems to me intolerable that the parties should have to wait for four years for this ruling and one wonders why the previous deputy commissioner couldn’t have left less abruptly, and finished these pending cases.

 


WIPO To Make Two Stops in the Holyland

March 18, 2015

road show

WIPO, the World Intellectual Property Organization that is manages the PCT system for filing International patents and the Madrid Protocol for filing international trademarks has a team of roving lecturers who will be performing lecturing in Israel.

Concerts Seminars are scheduled for 13th April in Beer Sheva and for the 15th April in Haifa.

More details may be found here

The provisional program in Beer Sheva Park Carusso for Science, 79 Atzmaut Street, is as follows:

Monday, April 13, 2015

9.30 a.m. – 9.50 a.m. Opening Session

Welcome addresses by:
Mr. Asa Kling, Director, Israel Patent Office (ILPO)
Local industry\Chief Scientist\Politician TBD
Mr. Yoshiyuki Takagi, Assistant Director General, Global Infrastructure Sector (GIS), WIPO

9.50 a.m. – 10.10 a.m. Topic 1: The ILPO as WIPO’s cooperation partner and service provider for the users of the IP system

Speaker: Mr. Asa Kling, ILPO\

10.10 a.m. – 10.30 a.m. Topic 2: Introduction to WIPO
Development of the International Legal Framework
Major Intellectual Property Economic Studies

Speaker: Mr. Moshe Leimberg, Senior Program Officer, Section for Coordination of Developed countries, Department for Transition and Developed Countries (TDC), WIPO

10.30 a.m. – 10.45 a.m. Topic 3: The Patent Cooperation Treaty (PCT) –
Introduction and Future Developments

Speaker: Mr. Matthew Bryan, Director, PCT Legal Division, Patents and Technology Sector, (PTS), WIPO

10.45 a.m. – 11.00 a.m. The PCT – The actual practice (questions, experiences, discussion)

Moderator: Mr. Michael Bart, Head, PCT division, ILPO

Speakers: Mr. Matthew Bryan, WIPO

Additional speaker(s) Local practitioner(s) TBD

Questions and Answers

11.00 a.m. – 11.15 a.m. Coffee break

11.15 a.m. – 11.35 a.m. Topic 4: Global Intellectual Property Systems
The Madrid System for the International Registration of Marks
The Hague System for the International Registration of Industrial Designs

Speaker: Mrs. Debbie Roenning, Director, Legal Division, Madrid Registry, Brands and Designs Sector (BDS), WIPO

11.35 a.m. – 11.50 a.m. Global Intellectual Property Systems: The actual practice (questions, experiences, discussion)

Moderator: Ms. Anat Levi-Ne’eman, Head, Trademarks Division, ILPO

Speakers: Ms. Debbie Roenning, WIPO

Additional speaker(s) Local practitioner(s) TBD

Questions and Answers

11.50 a.m. – 12.10 p.m. Topic 5: WIPO’s Arbitration and Mediation Center

Speaker: Mr. Matthew Bryan, WIPO

12.10 p.m. – 12.40 p.m. Topic 6: Global Databases for Intellectual Property Platforms and Tools for the Connected Knowledge Economy, with an emphasis on WIPO Green and WIPO Re:Search

Speaker: Mr. Yoshiyuki Takagi, WIPO

12.40 p.m. – 1.00 p.m. Topic 7: WIPO digital copyright developments

Speaker: Mr. Paolo Lanteri, Legal Officer, Copyright Law Division, Culture and Creative Industries Sector, WIPO

1.00 p.m. – 1.30 p.m. CLOSING SESSION

Questions and Answers

1.30 p.m. – 2.30 p.m. Lunch break with specific Sessions (Patents, Trademarks, Databases, and Copyright)

2.30 p.m. – 3.00 p.m. Ceremony to present the ILPO prize for an academic thesis on various fields of IP

Presenter: Dr. Daniel Ben Oliel, Associate Professor, Faculty of Law, Haifa University

The Wednesday Program in Haifa will be held on Wednesday, April 15 2015 at the Technion in the Batler Hall, Neeman Centre, Technion:

9.00 a.m. – 9.20 a.m. Opening Session

Welcome addresses by:
Mr. Asa Kling, Director, Israel Patent Office (ILPO)
Local industry\Chief Scientist\Politician TBD
Mr. Yoshiyuki Takagi, Assistant Director General, Global Infrastructure Sector (GIS), WIPO

9.20 a.m. – 9.40 a.m. Topic 1: The ILPO as WIPO’s cooperation partner and service provider for the users of the IP system

Speaker: Mr. Asa Kling, ILPO

9.40 a.m. – 10.00 a.m. Topic 2: Introduction to WIPO
Development of the International Legal Framework
Major Intellectual Property Economic Studies

Speaker: Mr. Moshe Leimberg, Senior Program Officer, Section for Coordination of Developed countries, Department for Transition and Developed Countries (TDC), WIPO

10.00 a.m. – 10.15 a.m. Topic 3: The Patent Cooperation Treaty (PCT) –
Introduction and Future Developments

Speaker: Mr. Matthew Bryan, Director, PCT Legal Division, Patents and Technology Sector, (PTS), WIPO

10.15 a.m. – 10.35 a.m. The PCT – The actual practice (questions, experiences, discussion)

Moderator: Mr. Michael Bart, Head, PCT division, ILPO

Speakers: Mr. Matthew Bryan, WIPO

Additional speaker(s) Local practitioner(s) TBD

Questions and Answers

10.35 a.m. – 10.50 a.m. Coffee break

10.50 a.m. – 11.10 a.m. Topic 4: Global Intellectual Property Systems
The Madrid System for the International Registration of Marks
The Hague System for the International Registration of Industrial Designs

Speaker: Mrs. Debbie Roenning, Director, Legal Division, Madrid Registry, Brands and Designs Sector (BDS), WIPO

11.10 a.m. – 11.25 a.m. Global Intellectual Property Systems: The actual practice (questions, experiences, discussion)

Moderator: Ms. Anat Levi-Ne’eman, Head, Trademarks Division, ILPO

Speakers: Ms. Debbie Roenning, WIPO

Additional speaker(s) Local practitioner(s) TBD

Questions and Answers

11.25 a.m. – 11.45 a.m. Topic 5: WIPO’s Arbitration and Mediation Center

Speaker: Mr. Matthew Bryan, WIPO

11.45 a.m. – 12.15 p.m. Topic 6: Global Databases for Intellectual Property Platforms and Tools for the Connected Knowledge Economy, with an emphasis on WIPO Green and WIPO Re:Search

Speaker: Mr. Yoshiyuki Takagi, WIPO

12.15 p.m. – 12.35 p.m. Topic 7: WIPO digital copyright developments

Speaker: Mr. Paolo Lanteri, Legal Officer, Copyright Law Division, Culture and Creative Industries Sector, WIPO

12.35 p.m. – 1.00 p.m. CLOSING SESSION

Questions and Answers

1.00 p.m. – 2.00 p.m. Lunch break with specific Sessions (Patents, Trademarks, Databases, and Copyright)

COMMENTS

We suspect that this portends Israel joining the Hague System for the International Registration of Industrial Designs or some other design upheaval.

In general I applaud the idea of not doing every seminar in Tel Aviv or Jerusalem. However, the majority of practitioners to not live in Haifa or Beer Sheva. Why start these events at 9 am? Surely a 10 am kick-off would be more appropriate where people are traveling in?


B144.co.il vs New 144 on Competing Marks, distinctiveness of a number and cybersquatting

March 12, 2015

Directory Inquiries for Bezeq, Israel’s historic telephone service was reached by dialing 144. Since the mobile phone and fiber-optic cable revolution, there are now lots of competing cellular and satellite phone providers and cable entertainment networks also provide phone services. Each supplier has its own directory inquiries, and dedicated websites.

On 3 April 2012, Mr Yossi Lotem filed a trademark for New144, for advertising, business administration business services, office services and shops in Class 35.

On 22 July 2012, Bezeq Israel Telecommunications LTD submitted a number of trademarks for stylized logos for b144.co.il, which is the Internet address of their online telephone directory website. The marks were submitted for Computer applications, electronic indexes, Mobile phone applications, Internet Applications, digital databases, directories and different services in Class 9, for managing databases, publicity, providing business services, business consultancy, office services and business databases in class 35, for telecommunications, communications, providing communication services,

The various logos included different slogans “all businesses in one website”, “helps you to chose”, and “All business and all people in one website”

b144.co.il   b144.co.il1  b144.co.il2

The patent office considered the marks as confusingly similar and as the parties were unable to come to an understanding, a competing marks proceeding was initiated.

In addition to competing marks, this ruling relates to procedural issues, fighting trademark battles without legal representation, inequitable behavior and cybersquatting. It also touches on whether numbers alone are registerable.

Lotem submitted his affidavit requesting examination on the merits. Bezeq submitted a statement from their Head of Information Marketing and Databases. It transpired that both parties have been providing internet publicity services, creating mini-websites for companies together with contact details.

Originally Lotem was represented, but his counsel requested to be released from his obligations with client’s consent, and so Lotem was cross-examined without representation.

The parties filed summaries and responses to the summary. Before ruling on the main competing marks issue, the Deputy Commissioner, Ms Jacqueline Bracha addressed a request by Bezeq for various parts of Lotem’s summary to be struck from the record as being an inadmissible widening of issues under discussion.

The admissibility of evidence and new claims in summations 

Bezeq claimed that the material related to new issues raised without submitting evidence and so should be considered invalid. Some was hearsay, and some was irrelevant. Lotem claimed that the material was with his counsel and he only learned about them late in the proceedings, but the material related directly to whether Bezeq had rights in 144. The legal issue was essentially whether in a competing marks ruling, evidence regarding the cancellation of a mark could be submitted.

Lotem did not accept that this was new material that went beyond issues discussed in his statement and that of Bezeq’s witness. Bezeq argued that they could not relate to the issues as they weren’t submitted at the proper time and in the proper manner. The information that Lotem wished to submit related to regulatory rulings concerning Bezeq’s activities that were designed to limit their monopoly and Lotem further noted that attempts by Bezeq to obtain a trademark for the number 144 alone were rejected. Lotem’s case wasn’t helped by him submitting statements headed as “affidavit” and ‘legalized’ by his nephew rather than by a lawyer.

In her ruling, the Deputy Commissioner Ms Jacqueline Bracha noted that the alleged inequitable behavior of Bezeq in using the requested trademark was not raised as an issue at the proper time and evidence was submitted after the evidence stage was completed. Furthermore, the additional material was not submitted by requesting late submission with appropriate justification, but was slipped into the conclusions without prior approval from the patent office.

Lotem’s excuse was that he was not represented and was not familiar with procedural issues. Furthermore, the procedural laws for civil procedures 1984 are not actually binding on the patent office. Ms Bracha acknowledged that the laws regarding widening the legal issues at late stages of a proceeding were court procedures, but ruled that they were generally applicable to patent office proceedings with modifications as necessary. Support was given (or at least reference was made to earlier decisions) from 147565 Orbotech vs. Camtek and from TM 158670 ruling concerning deletion of evidence re On line Marketing LTD. vs. Yoval Gorali et al.

In competing marks proceedings, traditionally the parties submit their evidence but do not submit statements of case. In a Circular from commissioner 013/2012 in addition to presenting evidence, the parties are cross-examined and may request permission to file contrary evidence. In this case such a request was not made.

MS Bracha noted that competing marks proceedings are adversarial and so each side should have an opportunity to present evidence and to challenge each other’s evidence. A corollary of this is that one cannot allow one side to submit new evidence late in the proceedings if the other side disagrees. Consequently, she ruled that Lotem cannot submit this new evidence at this stage. Sections 18-32, 24-37 of Lotem’s summary and appendices 5, 6, 7 and 9 are struck from the record as are sections 8, 10 and12 and appendices 1-5 of the response Lotem made to Bezeq’s summary.

Which mark should be preferred? 

Substantively, in competing marks proceedings the issues include who filed first, but more importantly, the issue of extent of use and and equitable behavior is considered.

Lotem filed 3 1/2 months before Bezeq but this is considered insignificant. Indeed, Bezeq has other marks for “b144″ and for “b144.co.il all businesses” that predated Lotem’s filings. Lotem showed that he’s filed a trademark for new144.co.il in 2010, and, between 2019 and 2014 had invested 200,000 Shekels in the project.  By 2014 he’d accumulated 40 clients and was making up to 20000 Shekels a month.

Bezeq started using the b144 and “b144.co.il all people. All professions” marks in question in 2010 and had some use of b144 since 2007 on Bezeq’s website.  Over the period from January 2008to 2013 Bezeq’ website was receiving 203 million hits a month with significant advertising revenue. Furthermore, Bezeq’s marks include b144 as a dominant element.

Ms Bracha ruled that the issue of whether 144 is a well known mark or indeed registerable is irrelevant and concluded that Berzeq had adequately shown more significant usage than Lotem.

As to equitable behavior, Ms Bracha accepted that this was critical in this instance, but did not see how Bezeq, with usage of b144 from 2007 could be accused of aping Lotem.

Lotem had used the website Israeli-business but decided that it was too long and then purchased new 144 after seeking professional advice and learning that the word new was desirable. Lotem originally denied being familiar with Bezeq’s website before filing his domain request in 2009 and only discovered it when Israeli-business appeared on Bezeq’s website. He argued that he did not request the website and that it was opened automatically when he purchased a business line.  However, Bezeq showed that the entry on Bezeq’s directory included a description of his services that Lotem himself had written and then he admitted having some prior knowledge of b144.co.il and of b144.

Additionally, Lotem was using the slogan “all businesses all professions” in a manner that was also more than reminiscent of Bezeq’s website. Bezeeq claimed that this was hardly coincidental. Lotem countered that unlike Bezeq he was not providing personal contact data for individuals but only business data and that the slogan “all businesses all professions” and variations thereof were widely used by other information providers and this was descriptive or his services, and there were only so many ways of describing such services.

Lotem argued that he wanted to use the word “new” and 144 was chosen as it is easily remembered. When asked what the number signified, he responded that it was an integer between 143 and 145.

The Deputy Commissioner accepted that this was a random number between 143 and 145 but noted that Lotem referred to his mark as new one four four and not as new one-hundred-and-forty-four, indicating that the subconscious motivation behind the random selection appeared to be the dial up number of Bezeq, since phone numbers are usually remembered as strings of single digits. Consequently the Deputy Comissioner ruled that in addition to scale of use, in terms of equitable behaviour Bezeq had a stronger case.

Lotem suggested coexistence under Section 30. MS Bracha ruled that coexistence in the same class required equitable behavior of both parties and was not convinced that Lotem had behaved equitably. Furthermore, the differences between clientele were not real differences. Both parties were providing business card type mini-websites to clients which was the same service. Consequently, she ruled that coexistence was inappropriate. Lotem mark was refused and Bezeq’s marks were allowed to continue for examination.

Lotem was ordered to pay 2000 Shekels in legal fees and 12000 Shekels in costs to Bezeq.

COMMENTS

This decision is more than reasonable. Since Bezeq’s monopoly was destroyed other parties can provide telephony services and Lotem can certainly provide a business directory and min-websites. The issue here is one of the choice of name. Lotem is a cybersquatter.

Numbers per se. are not considered distinctive and cannot be registered as trademarks. Intel called their fifth generation processors Pentium since despite the success of 286, 286 an 486 series PCs that revolutionized the personal computer industry, they did not have rights to the number.

In June 1994 Brian Lara scored 501 runs for Warwickshire against Durham setting a new world cricketing record. The clothing company that Lara was contracted to could have celebrated by issuing a celebratory 501 jeans. They didn’t as Levi-Strauss’ 501 design is so well known.

One is generally not advised to fight companies such as Bezeq without legal representation. Lotem’s arguments for the slogan were reasonable. Arguing that 144 was selected randomly from the numbers between 143 and 145 was not such a good idea.

Bezeq should approach ICANN to have the new144 website taken down. One cannot claim distinctiveness for adding the word new.


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