The IP Factor

February 5, 2010

JMB, Factor and Co.’s Trademark Event Tomorrow is an Outstanding Success

Filed under: Intellectual Property, Israel, Israel Trademark, trademarks — Michael Factor @ 2:20 pm

A guest post contributed by the IsraKat.

After that feral feline from London outblogged me on my home territory on Thursday, I have decided to launch a preemptive strike. I don’t think even he would have the Hutzpa to write-up an event before it happens.

I however, am not restricted by such scruples, and anyway, can always update this report after the event if anything particularly blogworthy develops.

Originally intended to be a cosy affair in the conference room of the Jerusalem offices of the firm, the organizers missed out on how much of a crowd-puller professor Phillips is, and were astounded by the number of lawyers, patent and trademark attorneys who registered, necessitating relocating to a larger venue.

Cafe Hillel accepted the challenge, and offered us use of their auditorium. They also provided the refreshments, thereby setting new standards for Israel IP events, with freshly brewed cappuchinos and croissants and quiches warm from the oven.

Jeremy Ben David welcomed the participants and introduced Dr. Factor who spoke about competing marks, providing compelling evidence why to file early and widely. Professor Phillips then spoke with authority and humour about recent trademark developments in Europe. The apex of the seminar was Ms. Brandy Riger’s talk on the trademark pyramid, a witty presentation on handling international trademark portfolios. We were left in no doubt that Brandy is a nick-name that comes from branding, her expertise.

After a sumptuous tea break, Professor Phillips spoke again; this time on the topic of Community Trademarks and the OHIM, and tried to predict what the future had in store.  

I am not going to second guess him here. I just hope that he didn’t foresee this preemptive strike!!!

The event finished with Adv. Aharon Factor speaking about the importance of using and maintaining ones trademarks; how litigating can strengthen a mark and how using a product name as a common noun or convertng to a verb can lead to it being lost.

A good time was had by all.  We are grateful to Professor Phillips for being so generous with his knowledge and his time.

IP Developments in Jordan and Egypt

Filed under: Arab IP, Intellectual Property, News, PCT, Patents, WIPO, trademarks — Michael Factor @ 8:19 am

The Jordanian Government was a little greedy in raising their trademark registration fees, and seemed to have forgotten that in a World Wide Recession, many multi-national corporations can simply forgo Jordanian rights. After successful lobbying from Jordanian trademark attorneys, the Jordanian Government has now decided to reduce the fees from US$930 to US$645. We note, however, that this is still more than the fee for filing a mark in one class in Israel.

Meanwhile the Egyptian “Ministry of Scientific Research, Academy of Scientific Research & Technology, Patent Office” has issued Declaration number 3 in respect of payment of annuities for the PCT national phase applications in which an extension of the time till March 31, 2010 was granted instead of 31 December 2009. The due date for annuities shall be calculated from the filing date of the international application.

We note that in Israel, annuities are only due, post allowance. Thus, this seems better value for money as deferring costs is a saving, and the costs will only be incurred if the application is allowed.

We further note that this past week, the Commissioner of Patents and Trademarks in Israel has issued his 79th Circular. His predecessors, though not quite as productive in this regard as he is, also issued some Circulars.

Not only is filing patents and trademarks in Israel generally cheaper than in Jordan and Egypt, and, we presume, more valuable due to more advanced industrial capability and the higher purchasing power of the inhabitants, but the Egyptians will have to start issuing circulars at a frenetic rate to catch up with the reforming power of Dr. Meir Noam!

We look forward to inviting our Jordanian and Egyptian colleagues to join us in using IP to promoting peace and security throughout the region.

February 4, 2010

D. Patrick O’ Reilley Discusses Licensing Contracts at LES Israel

Filed under: Intellectual Property, LES, Licensing — Michael Factor @ 8:28 pm

Earlier this evening, I enjoyed a well structured and informative presentation by Adv. Pat O’ Reilly, President of LES International, who stopped off in Tel Aviv on his way back from Turkey. Adv. O’Reilley, who is presumably of Irish Catholic ancestry, is a partner of Finnegan, Henderson, Farabow, Garrett & Dunner, and spoke on “Implementing Open Innovation: Research, Collaboration and Pooling Arrangements”.

Apart from great almond croissants, the main thing I came away with an understanding that when negotiating a collaboration deal between two parties, the details of the deal are up to the sides and do not matter so much as the need to forsee and relate to all possible eventualities.  It also transpires that such deals - often between a small start-up on one side and a big company on the other - are often renegotiated as time passes and the product, market share and other issues become clear.

If I need to recommend a US attorney to handle such issues for a local Israel client, I would unhesitatingly recommend Mr O’Reilley.

I knew that I was previously ill-informed regarding such matters, but thought I knew what a closed pool was. After all, I swim in one in the winter. Apparently, the term is used for pooled patent licenses, and raises various anti-trust issues. We were treated to an overview of such issues, and I learned that in the 19th and early twentieth century, various fields like sewing machines, airplane developments and so on, gave rise to patent pools and to government concerns on anti-trust. Apparently this happened with the Davenport folding beds. One wonders why a monopolistic regime in this niche area for a few years bothered anyone.

It was a good opportunity to see familiar faces. I was narked to see that the BlogMeister and IPKAT, Professor Jeremy Phillips has beaten me to it, blogging during the lecture – see Open licensing: the word according to DPat.

I hope that this versatile feline is unable to lecture and blog at the same time, as he is guest of honour at our trademark event on Sunday, which has had to relocate to a bigger venue, no doubt due to the crowds that Jeremy attracts.

February 3, 2010

Israel Patent Office to allow no more than two independent claims of each type

In the latest of a series of reforms, the Israel Commissioner of Patents, Dr. Meir Noam has decreed that a patent application may include up to two independent claims in the following categories:

  1. Methods of manufacture
  2. Claims for a device or system
  3. Claims for a tool for manufacturing
  4. Swiss type use claims

Comment

This decree follows and formalizes a decision by the Commissioner in an Appeal regarding Metronix, relating to a robot for cleaning swimming pools, which was considered as lacking in inventive step.  I have a problem with the decision and now with this decree: I respectfully submit that it is both arbitrary and illogical.

The Israel Patent Law, like other laws around the world, requires unity of invention. A single patent can claim one invention only.

Broadly speaking, in the United States, there is no limit to the number of independent claims and unity of invention is decided substantively. One has to pay additional fees for more than 3 independent claims, but provided the independent claims are classified as being in the same art group and apparently relate to the same invention, one can usually avoid a Restriction Order or requirement to elect a species for examination. 

In Europe, on the other hand, essentially one can have one independent claim for a device or system and a second independent claim for an associated method. If there is more than one claim of a single type, the examiner will argue that there is uncertainty as to the scope of the invention.

Both the US and the European models have an inherent logic. Deciding on a maximum number of independent claims other than one, seems to be arbitrary.

Section 17c of the Israel Patent Law allows one to conform claims of an Israel patent application to that of an allowed patent from one of a list of examining jurisdictions abroad having substantive examination. The list includes the US. Once allowed and published for opposition purposes, unity of invention is not considered grounds for opposition. One assumes that the provisions of the Law as legislated by the Knesset trump circulars of the Patent Office. Unless the Patent Office disagrees with this statement, applicants will be able to choose between more than two independent claims of the same type via Section 17c, or up to two claims via substantive examination. This seems somewhat arbitrary.

February 2, 2010

Israel to be downgraded in the US Special 301 Watch list

As informed readers will know, Israel appears on the infamous U.S. blacklist of countries that fail to protect copyright adequately.

In an agreement reached last week in Washington in talks headed by Israel Ministry of Industry, Trade and Director General Sharon Kedmi, Israel is to be taken off the list of offenders and will merely appear on the Watch list.

Of course the list has little to do with copyright. What creates tensions with the US is Israel’s burgeoning generic drug industry. Teva is the world’s leading manufacturer of generic drugs but there are other Israeli generic players such as Unipharm, Rafa and others.

With a desire to add Israel to the OECD, the watch list rating is a political embarrassment - as much to the US as to Israel, since the list is largely the result of bullying tactics by lobbyists, rather than a reflection of morals or ethics, and informed observers are only too aware of this. Indeed, one of the results of re Bilski could be the US itself not fulfilling TRIPS obligations railroaded through the WTO that by-passed the more democratic WIPO.

Background

In 2006, Israel re-amended a poorly written amendment to the Patent Law from 2004 providing patent term extensions that allows local generic manufacturers to manufacture and export as soon as the main patent has expired in at least one of the other countries having patent term extensions.

The original amendment was poorly written and then Deputy Commissioner of Patents Israel Axelrod interpreted the amendment to allow the applicant for the patent term extension to choose which country to base their application for extension on. I believe that the preamble to the proposed amendment makes his interpretation untenable. The second ammendment was designed to clarify the Knesset’s intent. Axelrod was side-ways promoted to the Beer Sheva district court instead of his becoming the Commissioner of Patents; a position that was empty for quite a while until the present encumbent, Dr. Meir Noam, assumed the reins.

Kedmi and his delegation have now apparently come to an agreement to scale back the number of countries in the list that Israel can rely upon. the development requires backing of the Finance Ministry.

It is easy to see generic manufacturers as pirates, but we note that Teva has a good track-record of invalidating pharmaceutical patents in US courts. Such patents should never have issued, and not always merely because of later discovered prior art. In a number of cases, the applicants were found guilty of fraud or other misconduct.

Unipharm successfully attacked half a dozen pharmaceutical patents in Israeli Opposition proceedings last year. The pharma-generic debate is largely about business issues rather than ethical ones. Indeed some critics point out that the original five year extension terms for pharmaceutical patents was a gift from legistlators to pharma companies that the health funds, the sick and ill are paying for.

Backing down to bully-boy tactics is one way of dealing with adverse pressure. It is a little like the way Olmert solved the long-standing dispute with the International Red Cross by addopting a neutral diamond shape instead of Israel’s Red Star of David logo. I think that Groucho Marx’ attitude regarding joining clubs that would have him as a member has a lot to say for itself. What Israel lacks is some national pride. That said, joining the OECD would be nice…

January 31, 2010

2009: China announces rise in PCT filings, whilst Israel shows drop of 29%

Filed under: China, IPO, Intellectual Property, Israel, Israel Patent, Israel Patent Office, PCT, Patents — Michael Factor @ 5:28 pm

Israel, like most of the developed world, suffered a tremendous drop in PCT applications, with the Israel receiving office reporting a drop of 29% between 2008 and 2009. China, however, has announced a rise of 18% in PCT filings, and over a million China patent applications filed at the SIPO in 2009. Israel is still filing more applications per head of population than China, but so what?

One wonders how China will ensure quality examination of this huge number. Time will tell.

January 29, 2010

Teva Wins Against Merck: Delaware Court Rules Temodar Patents Unenforceable

Israel’s Teva Pharmaceutical Industries Ltd. has defeated Merck & Co. Inc. in its patent litigation over the brain tumor treatment Temodar.

The US District Court for the District of Delaware ruled that Merck’s patent for Temodar is not enforceable due to prosecution latches and inequitable conduct.

Teva is now waiting for the US Food and Drug Administration (FDA) to give final marketing approval for the company’s generic version of Temodar. As the first company to file an Abbreviated New Drug Application (ANDA) with paragraph IV certification for the treatment, Teva is eligible to receive 180-day marketing exclusivity for its generic version of the drug.

The Temodar drug has annual sales in the US of $369 million. Merck acquired the drug when it bought out Schering Plough in November 2009. Merck is apparently “very disappointed” by the court ruling, which it intends to appeal.

January 26, 2010

Dr Stanley Davis, Senior Partner of the firm, passes away

Filed under: Uncategorized — Michael Factor @ 7:16 am
Tags:

 

אנו מודיעים בצער רב על פטירתו של השות הבכיר במשרדנו 

 ד”ר שמואל יוסף (סטנלי) דייויס

 אביו של השותף המנהל, ירמיה (ג’רמי) בן-דוד

השבעה תתקיים בבית משפחת דייויס, ברח’ אבן שמואל 59/3 רמות 2 ירושלים

 זמני תפילה שחרית כל יום: 6:45 וימי ב’ וה’ ב-6:40

מנחה – ב16:55, לימוד ולאחריו ערבית

לפי בקשת המשפחה, נא להימנע מביקורי תנחומים בין השעות 14:00 ל 16:00

________________________________________

With great sorrow we regret to inform you of the passing of

 Dr. Stanley J. Davis,

Senior Partner of the firm

 The shiva will take place at the Davis family home: 59/3 Even Shmuel St., Ramot 02, Jerusalem. (Tel.: 02-586 8261).

Times of prayers are as follows: Shacharit 6.45 (6.40 on Thursday and Monday)
Mincha 16.55 followed by limmud and Arvit
Mincha on Friday: 13:00 Mincha Gedola on Shabbat: 12:20

 The mourners will rise from the Shiva on Monday morning.

Please refrain from condolence calls between 14:00 – 16:00.

Our condolences are with his widow Joan Davis,
his son and Managing Partner of the firm, Yirmiyahu (Jeremy) Ben-David and with Hanoch (Kenny) Ben-David, Dr. Zev Davis, Rabbi Baruch Davis, Esti, Debbie, Nechama, Susie, the grandchildren, great-grandchildren and the rest of the family.

January 25, 2010

European Court of Justice recognizes ‘Vorsprung Durch Technik’ As Distinctive Trademark

Filed under: Intellectual Property, trademarks — Michael Factor @ 8:52 pm

Back in 1982, Sir John Hagarty spotted the slogan ‘Vorsprung Durch Technik’ which means ‘advancement through technology’ in an Audi factory, and used it as the basis of their marketing campaign in the UK.  So the slogan has a history of identification with Audi for at least 25 years. 

Like other British High School students with a TV at home and no aptitude for languages, the phrase was the only German sentence other than ‘Sieg Heil’ that I knew. Now, after a 7 year battle, Audi has managed to have this slogan recognized a trademark by the European Court of Justice. The slogan has been recognized a trademark for cars and car parts since 2001, but now has been widened to other classes including toys and clothing.

In a famous Only Fools and Horses episode, ‘Del Boy’ comforts a German girl about to give birth with the phrase and it appears in the lyrics of the U2 Zooropa song along with a number of other advertising slogans, and also in a song by Blur. It is used as a punchline in a joke in Guy Ritchie’s film Lock, Stock and Two Smoking Barrels. Do these references make the slogan public domain? Did Audi oppose the usage of their mark in polular culture?

The decision raises a number of issues. Firstly, the mark clearly lacks all distinctiveness in German, and though a successful advertising slogan, is it really an indication of origin, beyond implying that a car is German manufactured (implying, presumably, reliability by over-engineering)? If allowable for cars and car parts due to acquired distinctiveness through usage, why should the mark be allowable for other types of goods? Another issue is why should the ECJ deal with this? Presumably the correct forum is the Office of Harmonization?

Israel Patent Office Appoints Ombudsman to Deal with Customer Complaints

 

In a welcome development,  the Israel Patent Office has announced establishing an ombudsman to deal with customer complaints. Dissatisfied parties can now email Patent.Customer-Serv@justice.gov.il.

I believe this development to be part of an ongoing initiative by the Israel Patent Office to obtain ISO certification, and view both developments positively. 

 

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