Neil Wilkof, a leading Israel trademark attorney who specializes in licensing, has joined the IPKAT team. His maiden blog is: http://ipkitten.blogspot.com/2010/03/do-we-really-need-to-compare-value-of.html
We welcome him to the high profile blogosphere and wish him luck with his new enterprise.
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Posted by Michael Factor
The UK Intellectual Property Office (IPO) has announced that the pilot work-sharing programme, the Patent Prosecution Highway (PPH), between the IPO and the Japanese Patent Office has now been made permanent. Under (or should that be on???) the Highway, once an applicant has received a favourable decision from one office they can request accelerated processing of corresponding patent applications filed in the other, which should significantly speed up the patent prosecution process.
Source: IPO press release, 10 March 2010.
Additionally, the US and UK have now agreed to co-operate on patent processing, with the two governments having announced that their respective patent offices, the US Patent and Trademark Office (USPTO) and the UK Intellectual Property Office (IPO), will co-operate to develop a plan to optimise reuse of work on patent applications that are filed jointly at the USPTO and the UK IPO.
The offices will try to identify all potential areas of information utilisation by the end of 2010, and will work on building mutual confidence in the work done by each office.
Source: IPO press release, 10 March 2010.
Under Section 17c of the Law, the Israel Patent Office will grant an Israel patent having the same specification and claims to one allowed by a range of jurisdictions, including the JPO, USPTO and UKPTO, unless the invention relates to subject matter considered non-patentable under Israel Law, such as methods of therapeutic treatment, business methods and software per se. (all currently patentable in the US).
None of the jurisdictions listed currently take much note of what the Israel Patent Office allows or not, albeit the IDS in the United States does have to relate to the citations from Israel as elsewhere. Now that Israel is becoming an International Search Authority for the PCT, it is possible that other countries will be prepared to rely more on the Israel Examination.
Australia has a modified Examination procedure like Israel, and will grant a patent based on allowance elsewhere. At present Israel accepts Australian examination.
Leave a Comment » | Israel, Israel Patent, Israel Patent Office, Patents, UKPTO, US Patent Office, USPTO, patentable subject matter | Permalink
Posted by Michael Factor
In the UK trademark office, the ‘appointed Person’ has overturned a ‘hearing officer’s decision concerning a trace mark application filed by Coca Cola for “NO HALF MEASURES” applied for in relation to various services in class 41, including education, training, entertainment and sporting activities. (It is not recorded if the overturning resulted in spillage).
Unlike the hearing officer who considered the mark devoid of distinctive character, and therefore not registerable under section 3(1)(b) of the Trade Marks Act 1994, the appointed person considers the mark not devoid of distinctive character. The hearing officer, Mr. J Pike, had considered that the mark was nothing more than a slogan which sent a message – that the applicant provided services which would meet consumers’ requirements, even if their expectation levels were high – which could apply to any undertaking.
This is in line with an Israel Trademark decision regarding a Coca Cola advertising slogan – of the World. The Appointed Person, cited the recent ECJ decision in Audi AG v OHIM, Case C-398/08, see http://blog.ipfactor.co.il/2010/01/25/european-court-of-justice-recognizes-vorsprung-durch-technik-as-distinctive-trademark/ and held that the mere fact that a mark was perceived as being a promotional statement and, because of its laudatory nature, could be used by others, was insufficient per se to support a finding of non-distinctiveness under section 3(1)(b). He went on to rule that a mark could convey an objective message and still indicate origin, and the mark in issue had distinctive character for the services applied for.
Case: In the matter of application no. 2472042 in class 41 by The Coca-Cola Company, and an appeal to the Appointed Person against the decision of Mr A J Pike dated 30 April 2009, 28 February 2010.
Leave a Comment » | UKIPO, UKPTO, trademarks | Permalink
Posted by Michael Factor
Meir Gabai served as Israel Commissioner of Patents and Trademarks from 1969 to 1974 and went on to serve in a number of other public service positions, including deputy legal counsel to the Israel Government.
Gabai had an LLB from the Hebrew University 1956, and was called to the Israel Bar in 1958. He obtained a Masters degree in Comparative Law from Columbia University in 1962.
For a formal biography (Hebrew), see http://he.wikipedia.org/wiki/%D7%9E%D7%90%D7%99%D7%A8_%D7%92%D7%91%D7%90%D7%99
As I was in nursery school in the UK during his term of office, I am quoting my colleague, Shimon Shalit, who knew him from his time in the patent office before joining our firm:
I was in contact with Meir Gabai for most of my active career, from 1970, almost until I left the IPO. Although his career involved him in many fields remote from IP, he retained his activity in IP matters throughout his professional life and even after formally retiring.
Having said this there is little that I know precisely about him, apart from the following: Born in Jerusalem, Meir Gabai, was born to an established Jewish Palestinian family that fled the pogrom in Hebron. He had a respect for Jewish tradition and I remember visiting when he sat Shiva.
Meir Gabai was active in the IP field for many years, both on the international scene and on the national scene. When he became Commissioner in 1969 he was already recognized as an international authority in IP, his research on Technology Transfer having published by the UN.
Gabai was one of the original signatories (on behalf of the State of Israel) on the Patent Cooperation Treaty in 1970 and was active in bringing Israel to be a contracting state in 1996. From the start, he saw the operation of the PCT as a means of saving duplication of work and particularly as a way of enabling all participants to benefit from a high quality search and examination.
Whilst Commissioner, he headed the Copyright Law Reform Committee, which eventually resulted in the present Copyright Law. After his term as Commissioner, he was promoted to Deputy Solicitor General. From there he advanced to Deputy General of Ministry of Justice and to the Commissioner of the Civil Service.
He retained his interest in IP throughout his career. For many years he headed the Patent Law Reform Committee and was active in introducing new IP legislation. In parallel, he attended international IP conferences continued to be popular as a lecturer in the field.
After retirement, apart from IP consultancy services and counseling to Bank Leumi he served as a judge in the UN (or WIPO) establishment and as a WIPO arbitrator for international disputes, ending up as President of the UN Civil Court. He was respected and he respected others, and was honest, modest and quiet.
May his memory be blessed.
Leave a Comment » | IPO, Israel, Israel Patent, Israel Patent Office | Permalink
Posted by Michael Factor
Mally Levy is an Israeli model. When she married back in 2003, there were many other brides that wanted to be married in similar dresses and rented or bought them.
Galit Levi, the designer of Mally Levy’s wedding gown, calculated that by selling and hiring similar dresses, she would make a small fortune. When the orders dropped off faster than she suspected, she recorded a conversation with the fabric dealers in which they agreed that she’d been promised exclusivity, then hired private investigators to see which of her competitors were offering similar dresses. She sued the fabric wholesalers for breach of contract and other designers for passing off, and the competing designers and the cloth distributors for breach of contract regarding exclusivity for the fabric, unjust enrichment, damage to her reputation and passing off. The compensation claimed was NIS 2,532,652 (about US $ 840,000).
In a long, but beautifully reasoned and well written decision, Judge Achikam Stoler dismissed the claims, upheld the counter-claim of the fabric wholesalers and awarded legal costs to 4 or the five defendants. Instead of collecting in damages, Galit Levi ended up having to pay NIS 312,356 awarded to the defendants in legal fees and counter-claims.
The judge accepted that the plaintiff had proven that there was a verbal agreement between her and the importers as to exclusivity for the fabric, but found that such an agreement was poorly defined as to what the obligations of both sides were. Based on the testiment of the importer and of a leading designer, it was established that the nature of the verbal contract was a first right of refusal. In other words, the importer would import small quantities of the fabric and offer them to the plaintiff and, if the plaintiff would purchase the stock, would have exclusivity thereby. Otherwise, the importer could offer the fabric to other parties. The plaintiff understood the exclusivity as meaning that she was entitled to exclusivity for at least the season, however the importer, Trobolski Brothers LTD., were more convincing with their version, particularly as they were able to bring another leading designer, Danny Mizrachi, to collaborate their version. Judge Stoler ruled that although the Israel Courts had latitude to write details into a contract, there was a limit to what missing details and clarification he could add to a verbal agreement, and that the plaintiff had not established her version of what was agreed.
The various designers were not necessarily using the same fabric but arguably, another flowery gifyur (French lacy fabric), of which there were a range available from various wholesalers. Indeed, the plaintiff had made Mally Levy’s dress from one fabric and the rental dresses from 54 meters (4 bolts) of a different version.
It was clear that Mally Levy’s dress was made from the 9.5 meters of flowery gifyur fabric that the supplier had in stock and that he had previously sold to other parties.
The various competing dress-makers all claimed that even had the importer offered some type of exclusivity, they were not bound by this agreement that they could not know about and were not party to.
the judge accepted that following A.Sh.I.R. it was possible to get compensation under the Law of Unjust Enrichment where the plaintiff had failed to register her design. However, the judge was not convinced that the plaintiff deserved wide protection as another Israel designer had exhibited a similar dress in a previous season and admitted that he himself had been influenced by foreign designers.
The private investigators were able to order Mally Levy style dresses, but on cross-examination, admitted that they had no knowledge of fashion or the law, and thus were unable to give competent testimony that the dresses were similar enough to establish a case of unjust enrichment or passing off. The judge ruled that in a case like this, the plaintiff should have produced her dress and those of the various defendants to enable the court to directly compare. A video of the model in the dress was inadequate.
Three of the four defendants were able to show that their dresses were somewhat different, one using pearls, where the plaintiff had used crystals, etc. Galit Levi’s creation is based on a bustier or corset, whereas one of the defendants was using a different type of body. One of the allegedly passing off designs was apparently a two piece creation!
One defendant who had not fought throughout but relied on the work of the others was not awarded costs. The others were each awarded NIS 50,000 (about US $15,000) in costs.
The importer also cleared up a further in debts for orders not paid for and for damage to his reputation.
Judge Stoler also ruled that the plaintiff had not established the accuracy of her figures for months prior to the copies being made. She had not isolated rentals and sales for the dress in question from other styles and had not proven that the drop in rental income was due to brides renting the allegedly plagiarized versions.
COMMENT
Wedding dresses tend to share some common characteristics. They are usually full length and white. They are made from expensive fabrics. Some have plunging necklines, others are more modest. Some have backs, others are backless.
To see Ms Galit Levi’s current collection: http://www.galitlevi.com
It is likely that in a season, distinctive styles will be popular, and these may ape the dress worn by a celebrity or model. That which is considered in such a style may be different from a copy that is fairly considered as plagiarism.
Most importantly, the dresses have to fit the bride, and many brides do not have the figure of a model. That other designers chose to put a similar flower in the bride’s hair and claim that the dress was Mally Levy style was not enough to establish that Ms Galit Levy’s rights had been infringed.
This is a good decision. It is also an important one as it establishes what a plaintiff needs to prove to show that her design is being plagiarized.
Tel Aviv Central Court 2237-08-07 G. L. Couture LTD. vs. Trobolski Brothers LTD., Ovadia Cohen, Alon Solimny, Sabina Millenium LTD. and Hinuma Bridal Centre and Feminine Beauty LTD. 16 February 2010.
Leave a Comment » | Israel, Israel Court Ruling, Israel IP, israel design ruling, passing off | Permalink
Posted by Michael Factor
Michal David is an artist who creates household ornaments and knickknacks with a romantic look to them. Lots of cherubs, roses, ballet dancers pictures, etc. To get a feel for her style, see http://www.michaldavid.com/
One of her ranges of goods is the hamsa, a Kabbalistic hand shaped symbol believed by some (more primitive, less rational) as being a good luck charm. Her hamsas are decorated in a pseudo Victorian, nostalgic style. Her goods seem to appeal to 22 year old girls, and make popular Bat Mitzva presents.
The Hamsa is probably the Hand of Fatima, the younger daughter of Mohamet and not a Jewish symbol at all. It includes an eye motif and apparently wards off the evil eye. (Ayin Horah – Eye of Horus – Ancient Egyptian god).
According to weekly newspaper, Mekor Rishon, the Israel Postal Authority have decided to use one of her Victorian Hamsa designs as a good news telegram. Blanks are available from the 740 odd Israel Post Offices and also from their website. Ms. David has sued for copyright infringement and unjust enrichment, claiming NIS 1,000,000 in damages. A spokesman for the Post Office admitted that charges had been filed and said that the Post Office will present their version in court.
At this stage, I am not sure if the Hamsa designs used by the Post Office are copies of Ms David’s or merely in her style. Presumably the damages eventually awarded will be linked to bad faith or otherwise and to the amount sold.
Leave a Comment » | Copyright, Intellectual Property, Israel Copyright, design | Permalink
Posted by Michael Factor
In general, one has four months from the mailing date to respond to an Office Action. This period is extendable on payment of a fee. In Circular M.N. 82, Dr Meir Noam, the Israel Commissioner of Patents and Trademarks has announced that the four month deadline for responding to a single Office Action during prosecution of an Israel patent application can be extended by a maximum of six months and that the total number of extensions allowable during the prosecution of an application is 15 monthly extensions.
Notably, these extension caps do not relate to responding to the Notice Prior to Examination or to restriction orders claiming that there are more than invention. Nor are requests to suspend examinations included in this capping.
From receipt of the Notice Prior to Examination, things can still take about three years even if the Examiner were to respond by return. It is thus not clear how these moves, designed to make prosecution more efficient and to speed it up, will achieve these noble aims.
I am not sure that there is any inherent advantage is limiting how much time the applicant can procrastinate, at least not before the legislation of the proposed amendment to the Israel Patent Law to have 18 month publication. Postponing allowance merely postpones being able to enforce the patent. The number of cases where the Examiner takes more than 15 months of extensions without suspension cannot be very high. I would be more impressed if the patent office would publish a charter promising that the examiner would not sit on applications for more than 3 or 4 months without good cause…
Leave a Comment » | Israel, Israel Patent, Israel Patent Office, Israel Patent Office Rulings, News | Permalink
Posted by Michael Factor
The Israel Patent Office is to be closed from the 29th March 2010 to 6th April 2010 for Pesach (Passover).
As occurs a few times a century, there is agreement between the Western (Catholic and Anglican protestant) and the Eastern (Greek Orthodox) churches that Easter Sunday is 4th April 2010, so the Israel Patent Office is simultaneously closed for Easter. ( am not using the word ‘coincidentally’ - since there is a correlation between Easter and Pesach of course).
Ramadan finishes just before Rosh Hashana so the Israel Patent Office will apparently be open over Ramadan and Idel Fitteh.
Any deadlines occurring over the closure will be extended until 7 April 2010. There is a legal loophole that could be utilized by foreign entities missing a Paris Convention deadline for filing PCT applications to gain an extension. Please contact me if there is a need to do so, and we will explain the procedure.
Leave a Comment » | Intellectual Property, Israel, Israel IP, Israel Patent Office, Israel Related, PCT, Patents, WIPO | Permalink
Posted by Michael Factor
Intellectual Property Culture by Eric M. Dobrusin and Ronald A. Krasnow, is a kind of handbook for actual and aspiring in-house IP managers. Although it does not assume knowledge of IP, and defines trade secrets, patents, and other basic concepts, the book is not merely for new-comers, but includes much that licensed patent agents or patent attorneys will find interesting, particularly those that switch from working for service providing law firms to becoming in-house counsel.
Rather than to teach how to draft patents, the book teaches how to create an IP culture for a corporation. Infringement and competitors IP is discussed before how to plan a patent portfolio. Trade secrets and confidentiality are discussed before patents.
There are some very useful tips regarding attorney-client privilege in the US. In some cases, directors are advised to create personal privilege by consulting with IP Lawyers directly instead of as representatives of the firm.
Outside Counsel will be ambivalent about the book. On the one hand, there is a frank and revealing description of how many IP law firms operate, and a non-polemic but nevertheless implied criticism of common leveraging practices where the less experienced personnel do the billable work. On the other hand, in a table of avoidable causes of large legal bills is “trying to do the job of IP counsel to save a few bucks.”
There is a particularly good chapter on claim reconstruction that includes a table of patent terms that companies have spent millions in litigation based on what words like ‘and’, ‘about’, ‘composition’ and ’one’ mean.
I am unaware of any other book that is directed at the corporate niche in this mannerand suspect that the conscientious CTO, internal legal counsel, CEO or Vice President responsible for IP matters will read the book systematically and then refer to it regularly.
Intellectual Property Culture by Eric M. Dobrusin and Ronald A. Krasnow, Oxford University Press, 2008. 382 pages, including some useful appendices, boiler-plate contracts, NDAs, etc.
Leave a Comment » | Patents, US, book review | Permalink
Posted by Michael Factor
Teva are opposing Wyeth’s Patent Application Number 151450, which is a divisional application of 120382 “Extended Release Formulation Of Venlafaxine Hydrochloride”.
When Teva submitted 60 odd publications, Wyeth accused them of widening the basis of their opposition, claiming that the information should have been submitted in the Statement of Case. Additionally, they claim an interesting idea of Parent Application Estoppel, claiming that by not opposing the parent application, the opposer is estoppeled from opposing the divisional application, and requested the relevant clauses to be struck from the record.
Teva claim that the sixty publications submitted were indicative of the state of the art and were not substantive new grounds for opposition. Furthermore, Teva point out that Dexel have submitted these publications in parallel opposition proceedings. As to the Estoppel argument, Teva suggested that this should be discussed on its merits in the opposition proceedings.
Shoshani Caspi has refrained to comment on the issues raised and is allowing the new publications to be cited. She has, however, required Teva to state what each publication contributes to establishing the State of the Art.
I think Shoshani Caspi’s position is reasonable. I am, however, at a loss as to what Wyeth, represented by Richard Luthi, have to gain by having prior art excluded from an opposition proceedings on procedural grounds. If a patent were to issue due to prior art that negates novelty or inventive step not being considered on a technicality, presumably the patent would be unenforceable as it would not hold up in court.
Leave a Comment » | Intellectual Property, Israel Patent Office, Israel Patent Office Rulings, Opinion, Teva, pharmaceuticals, pharmaceuticals and Biotechnology | Permalink
Posted by Michael Factor
