Jeremy’s Swansong

October 6, 2015

Kat on fence

Professor Jeremy Phillips is planning on retiring in November.

Tomorrow’s PCTea Party may be your last chance to hear him perform.

Last Call – the IP Factor Annual PCT Tea Party Tomorrow!

October 6, 2015

Last Callback to work53b4219b-e7ef-4e92-acba-79f861ed7394

The IP Factor’s Annual PCT Party is tomorrow.

The reception will be followed by some insights by Professor Jeremy Phillips on recent IP developments around the World:
 “IP in 2015 – Where we are vs. Where I thought we’d be

When: 7 October 2015; 5 PM to 7 PM  Add to Calendar

Where:   Cinema City, Itzhak Rabin 10, (Opposite the Supreme Court),Jerusalem

To register, click here.
Contact us here

Method and System for Producing a Document

October 6, 2015


Israel Patent Application number IL 215110 titled “Method and System for Producing a Document” relates to Rami Dotan and Tal Petel relates to a method of producing a “yearbook”.

The claimed invention was originally rejected as relating to an administrative methodology rather than to a technical method. Furthermore, the claimed invention was rejected as known, in light of WO 2006063327 “Method of creating a yearbook”.

In response to the first office action, the first inventor scheduled a meeting with the Examiner who explained the rejection in more detail.

The Applicant responded to the Examiner’s summary of that meeting, that there is a technical problem in the market in that the graphic designer does not know the students and so it is difficult to correctly link photographs with text.

On 7 August 2013, The Examiner issued a further Office Action detailing why the claimed invention did not relate to patentable subject matter under Section 3 of the Law and added some additional objections.

On 17 November 2013 The Applicant responded with a narrower claim set that allegedly overcame the objections.
In a final rejection dated 26 June 2014, the Examiner again refused the application and the Applicant requested a further Interview.

On 5 November 2014, the Applicant, his “representative for the purposes of the Interview” (apparently Patent Attorney Chaim Brandstatter) and the Examiner met, and versions 4 and 4 1/2 of the claims were discussed. Based on the similarity of the cited art WO 2006063327 “Method of creating a yearbook” and the claimed invention, the Examiner was persuaded to withdraw his section 3 (patentable subject matter) rejection and to focus on the issue of novelty and inventive step (non obviousness).

Furthermore, the parties accepted that the differences between the cited art and the claimed invention were features known to persons of the art.

Following the meeting of 6 November 2015, the Applicant submitted a further version (version 5).

Despite the Examiner considering the claimed invention to be obvious in light of WO 2006063327 together with two elements well known in the art, the Examiner did a further search and discovered USSN 2002/0055955 “Method of Annotating an Image” that allegedly taught these two features. Consequently, the Examiner refused the application under section 5.

The Applicant appealed this decision:

The Applicant felt that the 5th version of claims, submitted after 5 November 2014 was not addressed. The Examiner countered that the elements in version 5 were not supported. The Applicant considered that this went against the conclusion of the meeting, Examiner guidelines and Section 23 of the Law.

According to the guidelines, after issuance of a final rejection, the Applicant can either correct the outstanding issues or request an interview. In this instance, the Applicant attempted to do both, and following the interview, submitted a further claim-set. Thus the Examiner was within his rights to reject the Application following the interview, despite the further amendment submitted.

Neither the Law nor the Regulations provide a maximum number of Office Actions, but the Deputy Commissioner, Ms Jacqueline Bracha considers it unacceptable to understand that the examination allows infinite iterations and the Examiner cannot issue a final rejection.

That said, the case was considered borderline and the Deputy Commissioner was prepared to rule on the merits of the claimed invention, i.e. to look at the final version of the claims.

The claimed invention is:

1. A method for producing a document (30, 32, 36) comprising photographs (38) of persons (16A, 16B, 16C) and texts (42) associated with said photographs (38), said method comprising the steps of:
Manually capturing a single photograph or a single group (A, B, C) of photographs for each of said persons (16A, 16B, 16C), by a photographer (24), and loading the photographs while recording the singularity to a first table (58) of a database (52) being a part of a site (22) on the internet (14);
Manually providing by an organization in which said persons (16A, 16B, 16C) are members, a second table (26) to said database (52), said second table (26) comprising one text (42) for each of said persons (16A, 16B, 16C);
Manually matching, by persons familiar with said persons (16A, 16B, 16C) each of said texts (42) of said second table (26) with one of said photographs of said first table (58);
Upon said manual matching, programmably hiding that text (42) and the photograph matched thereto and any photograph grouped thereto, thereby avoiding failures;
Manually printing, by a graphic artist (20) accessing said database (52), each of said matched photographs (38) adjacent to the text (42) matched thereto,
thereby tracing a failure once a text of said second table (26) cannot be matched with a photograph.

Claims 2-10 are dependent method claims and claim 11 is for a corresponding system.

The claimed invention is similar to the first citation, with two features taught in the second citation.
Since the Applicant does not provide an alternative method of implementation to that given in the prior art, the claimed invention is either not enabled or lacks inventiveness.

Section 12 requires enabling disclosure. Where a method of achieving the claimed invention is not provided, one can conclude that either it is not possible or that it uses known elements and is thus obvious. Either way, in this instance, the Application does not provide enabling disclosure and is thus not allowed.

In conclusion, the Application was rejected.


In Australia, the patent corresponding to WO 2006063327 did issue back in 2005. I am not sure though, that it would still be considered directed to patentable subject matter as such computer facilitated inventions are rather difficult to obtain.
From the number of dubious publications with titles such as Directory of World’s Leading Patent Experts that I am invited to appear in subject to paying exorbitant fees, it does seem that there are patent attorneys who missed out on their high school yearbooks and are willing to pay to see their mug-shot and biography in a directory that no one reads.

AIPPI Israel’s Second International Convention on Economy of Innovation – March 21-22, Save the Date

September 30, 2015


The AIPPI and AIPPI-Israel have announced their Second International Convention on Economy of Innovation which will be held on March 21 and 22.

For more details see here.

This is the second such conference. The first was held a couple of years ago and was a great success. See here and here.

Conference Coordinator Dorit Korine, AIPPI Chairperson Tal Band and Co-chair of Organizing Committee Ilan Cohen are to be congratulated for taking on this conference.

Monkey Business

September 30, 2015

Monkey business

In 2011 British wildlife photographer David Slater was on the island of Sulawesi, following a troop of macaques. He set up his camera and waited. Suddenly, a cheeky monkey grabbed the camera, smiled into the lens and pressed a button. The photographs that followed went on to become internationally known – featuring in a wildlife book by Mr Slater.


Now, animal rights organisation People for the Ethical Treatment of Animals (PETA) has taken legal action in the United States on the monkey’s behalf (naming it Naruto), claiming that the animal owns the copyright in the successful photographs and should therefore reap the benefits financially.  Slater contends that he, in fact, was the brains behind the set of photographs of the monkey he named Ella. “A monkey only pressed a button of a camera set up on a tripod,” he argues. “A tripod I positioned and held throughout …”

Meanwhile PETA’s argument is that it is not the person who owns the camera that owns the rights but the being (in this case, a monkey) who actually took the photograph. The case will be decided by the US federal court in California.

For more details, and their legal analysis, see the IPKAT here.


I don’t think this is a laughing manner.

PETA believes that all animals have feelings and therefore rights. They are not ours to eat, wear, experiment on, use for entertainment or abuse in any other way. The basis for their perspective on animal rights is that animals suffer and have a right to live free from suffering and pain.

I don’t agree with their agenda, but I can understand their logic. I have at least one vegan friend who won’t wear leather shoes. As long as they merely demonstrate and persuade nubile young actresses to show their pubic fur in their campaigns against the fur industry, I have no problem.

However, by claiming IP Rights for macaques, PETA is going from a very radical position to an even more radical one.

This would not be serious except that there have been judges willing to see apes as having rights.

In 2013, an organisation called the Nonhuman Rights Project filed a lawsuit in the New York Supreme Court on behalf of four chimps kept for research by Stony Brook University. The eventual conclusion of Justice Barbara Jaffe on 27 April 2015 was that they were not to be treated as property, but as legal persons. Not as persons with full human rights, but as persons with a right not to be held in captivity and a right not to be owned.

It is not inconceivable that some left-wing judge could recognize animals as having the right not merely not to be owned, but also the right to themselves own property. From here, the jump to allowing ownership of non-physical property, such as intellectual property, is not so large as to be beyond comprehension.

Whilst this sort of thing is happening, and California is a center for this type of thought, I note that Islamic fundamentalists have decided that they can go around executing and raping people. They are rejecting Western values in favour of some highly extreme interpretation of their religion. Let’s not provide them with additional evidence that Western Liberal Democracies have gone completely nutty.

It may also be worth remembering that the selfie is not the highest form of Western expression.

Eden vs. Eden Wineries – Competing Marks

September 21, 2015

Out of Eden

Two wineries have had the same idea, and have each filed trademarks. One is for Eden, and the other for Eden Winery.

The Israel Trademark Office was not prepared to let two such similar marks coexist, and initiated a competing marks proceeding.


One of the parties filed evidence without the help of legal counsel and then sought legal counsel. On advice of said counsel, they requested to correct their submitted evidence ahead of the hearing arguing that under Section 41 of the regulations, the Commissioner can authorize such amendments.

The other party objects to this, and insinuates that it is destroying evidence, and that there is no procedure for ‘correcting’ an affidavit once it has been submitted. The applicant denies trying to hide anything and claims that the Patent Office has wide discretion regarding allowing such amendments.

The first party responded and the second party requested that the first party’s response be struck from the record. The Deputy Commissioner Ms Jacqueline Bracha decided not to relate to all the responses and counter responses, but only to the issue of submitting further evidence and correcting the submission. She noted that the first request understood that it was permissible under Court Procedural Rules adopted by the Patent Office in the relevant Circular (013/2012 v. 1), and that neither side had asked or received permission for subsequent submissions.

On the grounds that the procedure for competing marks is not set out in the regulations and that the hearing has not happened, the Deputy Commissioner Ms Jacqueline Bracha agreed with the request and allowed the submission.  As to the charges of ‘correcting the affidavit’, Ms Bracha considers that the applicant wishes to exchange one set of evidence with another and not correct the affidavit, and considers this allowable, whether as submission of additional evidence or as correcting the statement of case.

The Deputy Commissioner based her ruling on the following considerations:

  1. the Affidavit related to the key issues of when the mark was first used, extent of use and use in good faith. She was prepared to consider discrepancies between the first and second statements in her final ruling, but considered it appropriate to allow the exchange of evidence.
  2. The submission of the additional affidavit does not turn the clock back and result in a lost of opportunity to the competing party who can cross-examine on the apparent discrepancies if he so wishes.
  3. The competing party can relate to the evidence in the second affidavit in writing up until two days before the hearing.

Noting that such procedural irregularities cause additional work, she ruled costs in favour of the competing party, but due to the competing party submitting three rounds of procedural complaints she limited the interim costs to a mere 500 Shekels.


I am not sure that wine is associated with Eden. Wine and its afflictions were first discussed after the Flood. That as may be, there is no place in Israel that is called Eden. We to have an Arab village called Faredis which became corrupted as Paradise, and there is a Gei Ben Hinom, the Hinom Valley below the Old City of Jerusalem whose name as Gehenna become associated with hell.

The name Eden is used for by a natural food supermarket, by L’Oreal and others. Apart from bottled water marketed under Waters of Eden, the mark is already registered by Absolut Vodka in class 33, which is the same class as wine.

Israel Patent Office Statistics 2014

September 21, 2015

statistics 2
Under the Rules for Disseminating Public Information, the Israel Patent Office has published its annual report for 2014. The report may be found Annual Report 2014_(Hebrew). The English version is not yet available.
Paper windmill

The most interesting thing about the report is probably the graphics. Following previous years where the report was decorated with paper airplanes and paper hot air balloons, this year’s report is embellished with paper windmills. Why? The Answer, My Friends, is Blowin in the Wind.

I don’t intend extensively reproducing the graphs. Frankly they are not all that interesting. Instead, here are some observations and possible explanations.

6273 Patent Applications were filed in Israel in 2014 which is slightly up from 6184 in 2013, but still significantly lower than the 6793 applications filed in 2012. Indeed, Apart from 2013, the number of patent filings for 2014 was the lowest in a decade which peaked at 8051 applications in 2007. Applications pending examination are also down and more applications are being allowed. We attribute this to the fact that a precondition for the Israel Patent Office being an International Search and Examination Authority was for there to be a minimum of 100 examiners. This gives a favorable Examiner to application ratio that has resulted in shorter backlogs and more efficient examination.
18% of Applications are filed by local entities in 2014 which is the highest in the past decade. This statistic probably reflects the fact that many of the historic advantages of provisional applications are no longer the case and that small timers paying a reduced filing fee may find filing in Israel cost-effective compared to the US. Of course what this also means is that foreign filings made up a mere 82% of total filings in 2014, down from 88.8%. By a little mathematical manipulation, it seems that the number of foreign patent filings into Israel has dropped by about 250 or by 6.75% in the past year.

In an earlier post, I reported on a study by BdiCoface which found that 3,555 Israel based patents were filed in the US.  During this same period, only 1129 cases were filed in Israel by Israeli entities. In other words, Israelis and Israel companies are three times as likely to file in the US as in Israel. Some technologies, such as security related ones have to be first filed in Israel. Some cases, such as methods of treatment, are only patentable in the US. Nevertheless, filing Israel patents is clearly not a priority for Israel based patenting entities. It is certainly true that Israel is a small market. Nevertheless, since enforcement is considerably cheaper in Israel than in the US, I think that companies should consider filing in Israel more seriously. Particularly where there are Israeli employees and business partners.

After a slow start in 2011-2012, There has been a sharp rise in accelerated examination in Israel by suing the Patent Prosecution Highway, with 94 applications being examined via the PPH.

Interestingly, some 22 administrative decisions were made in 2014 to allow late entry into Israel from a PCT application of which 18 were favorable. Israel holds the relatively high standard of allowing late filings in circumstances that are ‘unavoidable’ rather than merely ‘unintentional’. I wonder if the 18 cases were truly missed deadlines due to acts of God, earthquakes, postal strikes and the like, or if the patent office is becoming more lenient in this regard?

Fascinating Bits of Trivia

As usual, the report includes some fascinating statistics such as Israel being the 24th most popular patent filing destination in the world, slightly more popular than the Ukraine, but less popular than New Zealand. When normalized by GNP, Israel remains the 30th most popular destination in 2013, with 480 patents per billion US dollars. This puts Israel ahead of Ireland at 449 patents per billion US dollars, but slightly behind Kazakhstan with 493 patents per billion US dollars. When normalized for population size, Israel comes in at 28th place with 149 patent applications per million residents. This is slightly less than Latvia (151) and Belarus (167) but ahead of Iran (146 patents per million).

There is a rallying in the number of PCT applications filed by Israelis, both in Israel and elsewhere which may indicate that we are pulling out of the effects of the World Wide Recession.

Some 59.4% of PCT applications filed in Israel specify Israel as the International Search Authority, up from 55% in 2013 and probably indicating customer / attorney satisfaction with the International Search Reports issued. In 2014, Israel conducted 9 ISRs for PCT cases outsourced by the USPTO. This was a mere pilot and may become a popular service.

A very significant percentage of patent applications filed in Israel are for pharma technologies. This presumably reflects the strong Israel pharma industry including Teva, Neurim, and generic companies such as Unipharm and Perrigo (technically an Irish company, but largely ran from Israel) rather than Israel’s attractiveness as a market.


The number of design applications filed in Israel last year was 1384 which is slightly higher than 2013 when 1353 design applications were filed, but still lower than for every year from 2004 through 2012. This follows the trend seen with patent applications filed in Israel. Bck in 2008, 1775 design applications were filed, so there is certainly potential for more of this type of work.

We anticipate that plans for Israel joining the international system for filing design applications will probably increase the number of designs filed into Israel, but reduce the billable work for patent attorneys. This is what happened with trademarks, where there has been an overall increase in trademark applications but this is mostly due to the Madrid Protocol applications designating Israel, and there has been a drop in trademark filings filed directly into Israel and thus a similar drop in billable work for patent and trademark attorneys.


With less work coming in, and an increase in both legitimate competition and illegitimate, i.e. licensed practitioners including patent attorneys and attorneys-at-law, encroachment from non-licensed practitioners, including jumped up paralegals, retired examiners, failed patent attorneys, retired US practioners and US companies that operate directly in Israel such as Finnegan et al. and others, there is apparently more people after less work, and things are unlikely to get better quickly.

It is easy to blame the depressing statistics on international trends and to see this as the fall out of the World Wide Depression. Indeed, filings peaked in 2007, and the Lehmann Brothers went bankrupt and things started spiraling out of control in 2008. Nevertheless, it is not impossible that the IPO can do to reverse the trend, or to speed up the recovery. I would suggest that the very fast and significant increases in various Israel Patent Office fees coupled with the relatively strong Shekel may be turning away potential filers. The USPTO and EPO essentially set fees to cover operating costs. The Israel Patent Office is a cash cow that generates income for the Israel Government and which has an income that is apparently twice its operating costs. I would suggest that many fees could be reduced to pre-Greed levels and salaries for Examiners and other IPO staff could also be increased to levels more commensurate with what attorneys in private practice earn. This can only increase the quality of the Israeli examination. With greater motivation, examination periods might become even shorter and standards might increase. This together with reduced filing and other fees could make Israel a more attractive component of potential IP portfolios.


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