The IP Factor

In an interesting Opposition proceedings regarding Israel Allowed Application No. 133307 to Handasat HaSapak LTD. (Literally, Power-Supply Engineering LTD.), the Deputy Commissioner of Patents and Adjudicator of Intellectual Property, Noach Shalev Shmulovich accepted opposer’s arguments that the Independent Claim 1 for transformer circuit for fluorescent lighting was effectively anticipated by a diagram in a classic Russian text book by Costenko and Pyutrovski that was published in Hebrew in 1965.

The remaining claims 2 to 9 added additional features to the main claim.

In addition to the text book, the opposers additionally cited a couple of German patents from the 1930s.

The applicant, represented by Patent Attorney and Advocate Daniel Freiman (himself an electrical engineer), alleged that the main invention was found in dependent claim 5.

As an employee at Seligsohn & Gabrieli, I worked on the original opposition that was filed by Adv. Adi Levit on behalf of Menora Pikud V’bakara LTD. (lit. Lighting Control and Monitoring LTD.), and am not surprised that the Opposition was successful. A second opposer, Handasat Heniah LTD. (lit. Motion Engineering LTD), represented by Adv. Kaldaron took over at some stage.

 There are two obiters in the decision that I am unhappy with however.

Harking back to his mistaken statement in Giraffa vs. Melenick ,  Shmulovich ruled that where applicant is overly greedy in claiming more than he is entitled to, it is sufficient to destroy the main claim, and all dependent claims fall as well.

Now the Applicant may well have been unaware of the Russian textbook, even if translated into Hebrew 40 years earlier. Similarly, the applicant may well have been unaware of a couple of obscure German patents that aren’t available on line. I beleive that attempting to claim a generalized circuit widely and to establish fall back positions is legitimate patent practice. We note that the Examiner, supposedly an expert in electrical engineering, who sees very many applications and is supposed to be familiar with the field, accepted the main claim. Furthermore, I assume that Daniel Freimann, founder of the AIPI and respected Israel IP Author conscientiously drafted and filed claim 1 in good faith. Whether in proscution, during an opposition proceedings or in contentious litigation in enforcing a subsequent patent, if the monopoly of claim 1 should be considered too wide due to prior art coming to light, the monopoly defined by a dependent claim should be an aceptable fall-back position if the monopoly defined is novel and inventive.   I believe that the purpose of the opposition proceedings is to enable interested parties to bring substantive reasons to the consideration of a higher authority to reconsider the patent. In my opinion, the adjudicator should consider each and every claim substantively, not content himself with the main claims.

Additionally, the Adjudicator made an issue of the opposer supplying additional material, i.e. the German patents at a late stage of the proceedings and claimed not to accept them as evidence but merely as indicative of the state of the art (whatever that means). There is no reason to believe that these publications were deliberately withheld, and every reason to assume that the opposer was simply unaware of the additional prior art until later on. If a patent oppositon proceedings was a regular civil matter between two parties, this approach would be acceptable. Indeed it is based on standard civil procedural law. However, in the case of oppositions, the opposer is acting in the public interest and the Patent Office should consider all issues when raised, so long as the proceeding is still taking place and unless there is reason to assume intentional obfustication – which can happen, since there opposer has an interest in drawing out proceedings. Nevertheless, if the adjudicator wants to punish the opposer or compensate the applicant for late submission of evidence by the opposer, he can do so when awarding costs. 

One footnote, we note that all of the parties seem to have very literal names. Not the sort that would be easy to trademark!