Israel Patent Office Prevents Novartis from Submitting Empirical Evidence in Patent Opposition case.

September 30, 2009

IL131039 is the Israel Application that is the national phase entry of WO/1998/035681, claiming priority from a Swiss application filed back in 1997. The application titled “FORMULATION AND FILM-COATED TABLET COMPRISING OXACARBAZEPINE AND PROCESS FOR PREPARATION THEREOF” relates to an anticonvulsant and mood stabilizing drug, used primarily in the treatment of epilepsy that is also used to treat anxiety, mood disorders and benign motor tics. The drug is apparently marketed as Trileptal by Novartis.

In what appears to be an extreme move for an intermediate proceedings, the Arbitrator of Intellectual Property, Noach Shalev Shmulovich: (i) struck empirical evidence of the effectiveness of the drug from the opposition file ruling it procedurally inadmissible, and (ii) decided not to allow the applicant to appeal this intermediate decision to the District Court.

It appears from the published protocol of a hearing held on 15 September 2009, that the evidence was provided by expert witnesses that were not competent to testify to the accuracy of the data provided, and that the data could not be allowed as evidence in any other procedurally acceptible manner, as apparently it was not published. The intermediate decision as published is a not overly coherent piece of the protocol of a hearing and could usefully have been edited before publishing. I’ve read it through twice and cannot follow exactly what was happening, but reading between the lines, it appears that there were serious procedural flaws in how the data was submitted and that the hearing is being extended over a long period of time. Nevertheless, throwing out what appears to be central evidence on the basis of procedure seems to be a serious decision to make, particularly as although the opposer, Teva, is presumably inconvenienced by a long drawn out opposition hearing, the applicant, Novartis, is, one would presume, more inconvenienced since until the patent issues if it ever does, Teva could manufacture without fear of being sued. Thus the arbitrator seems to be punishing the applicant for delays that are not in its interest.

There are a few published, peer reviewed papers on the coated tablets and so one assumes there will be some published evidence that can be (was?) submitted. Nevertheless, one suspects that the decision will have repercussions and if the opposition is successful, it would not be surprising if Novartis appeals to the Courts. We await further developments.

Leave a Comment » | drugs, Intellectual Property, Israel, Israel IP, Israel Patent, Israel Patent Office, Israel Patent Office Rulings, Israel Related, pharmaceuticals, Teva | Permalink
Posted by Dr Michael Factor

Patent 2009 and Other non-Licensed Practitioners

September 30, 2009

Ms Jessica Cohen

We’ve just been scammed with details of Patent 2009, a new service offering patent pending status + search for 2009 NIS + fees. Someone wise once told me that when something sounds too good to be true, it usually is.

Apparently the firm, operated by a Ms. Jessica Cohen (presumably the attractive woman in the white bathrobe that appears in their spam mail shot) uses technical experts to draft and file provisional patents without claims in the US.

Ms. Cohen does not appear to be a registered Israel Patent Attorney or an Attorney-at-law. I checked both registries, but clearly there a lot of Cohens and she may be licensed under another name. From her website she certainly appears not to be licensed. This does not stop her providing testimonials from satisfied clients for both patent and trademark services.

Alongside the woman in the bathrobe is a picture of an issued US patent resplendent with seal and ribbon.  Since provisional patent applications do not become examined and cannot issue into allowed patents, this is a little misleading.  

Ms Cohen claims that Patent2009 is her registered trademark and uses the circle R mark. She has indeed filed a trademark application in Israel for the stylized logo, but the mark has not yet issued. Since words like Patent cannot be protected by trademarks and 2009 is inherently non-distinctive, we wait to see how examination of the trademark proceeds. We are pleased to note that she has the courage of her convictions and does not use professional counsel for her trademark services. We also assume from her choosing such a poor choice of mark, that she believes in filing to obtain pending status rather than to filing applications that may be allowed.

When drafting provisional applications, like real utility applications that are examined, every word is a two-edged sword. Statements can be used against you. There is a reason why qualified practitioners are expensive.  If the provisional does not include a proper description of the inventive feature that later on, on examination, proves to have novelty and inventive step,  it is valueless. If after filing the provisional, an inventor describes something or publishes it in a publicity brochure or the like, but the provisional is insufficient, then claiming priority rights from it is meaningless.

Anyone can file a trademark application for themselves. Only licensed patent attorneys or attorneys-at-law can do so on behalf of clients. Helping filling in forms is legal advice. It is illegal to do this if not licensed to do so. see Section 19 and 20 of the Israel Bar Law.

Ms Cohen apparently files provisional application without claims. It is not clear that such an application can serve as a priority document for a regular application.  

She can’t have professional liability insurance as she is not a professional and we assume in three months time she’ll be trading as Patent2010, putting her fees up by a Shequel and the Limited liability company which presumably has few assets will no longer exist.

We call upon the AIPA and the Israel Law Society to protect the interest of the public and the profession and to close her down.

Another non-licensed practitioner that came my way recently actually calls himself a licensed patent agent in his sales literature, despite not being licensed in Israel, the US or anywhere else. This is not only illegal under the Israel Bar Law, but is also passing off and unjust enrichment.

6 Comments | Business Method, Intellectual Property, Israel, Israel IP, Israel Patent, Opinion, Patents, provisional, Uncategorized | Permalink
Posted by Dr Michael Factor

Update from the AIPA

September 29, 2009

The Association of Israel Patent Attorneys (AIPA) our esteemed professional organization , otherwise known as the Agudah (and not to be confused with Agudat Yisrael), does not seem able to maintain a list of email addresses of members. Thus despite having paid my annual 2009 membership twice, I do not get these updates and suspect, indeed know, that many other members, particularly sole-practitioners,  don’t either.

However, the larger firms do seem to get updates and our firm got a copy that they forwarded to me.  As the summary was sent to firms and not to members, it is clearly not confidential, so I am discussing it below:

  1. Non-licensed Practitioners
    It seems that our committee is exploring cooperating with the Israel Law Bar to prevent non-licensed practitioners offering patent services. This is a rare instance where the public and the profession’s interests are aligned, and we hope this initiative bears fruit. It is certainly a better idea than inviting non-member violators to a voluntary hearing which was the Vaad’s previous approach.In this regard, I would like to see Attorneys-at-Law who are no not registered patent attorneys avoid using the term. It is misleading to the public who seem annoyed to have to pay a patent expert to tidy up the mess lawyers create us.
  2. Registering Plant Varieties
    A second issue is the law for registering plant varieties. This apparently is maintained by The Volcani Institute which is in itself a problem since they are the largest developer of plant varieties, so have a conflict in regulating the register that they are the largest user of.There is currently one Examiner who though phenomenally knowledgeable is not in the best of health. In what seems a sensible idea, the committee of the Association is lobbying to have the examination and registration handled by the Patent Office.
  3. Amending the constitution
    A third issue is amending the constitution of the organization. This one raises a red flag. At the last GM a committee not vastly dissimilar to the new committee and with the same chair-person did not mention amending the constitution and one would imagine that was the correct forum for so doing. At the GM, the only consitutional issue raised, was by myself, where I pointed out that the proxy voting announced on the day to ensure that the current people were chosen, was unconstitutional. the response (by Adv. Freimann, an elder of the profession who wrote the thing) was to tell me that although this was indeed the case, it had never stopped them in the past! Since an oligarchy of 4 offices voting in unison by proxy (without the absentee voters even knowing who would stand) happily determined the incoming committee without worrying that absent members could have registered proxy votes had they known that it was allowed, and without worrying that the move was against the constitution, one wonders why bother amending the constitution which is irrelevant anyway. Indeed, I hazard a guess that I am the only person to note when the organization does things unconsitutionally. Another problem is how will the constitution be amended? We’ve all (at least all those getting the poorly distributed summaries) been invited to submit amendments. Presumably the committee will select those they like, and by proxy vote amend the constitution in one of the committee meetings. So why bother?
  4. Issues For Discussion with Patent Office
    The final issue and this is the biggy, all members can submit issues to be brought before the working committee of the Commissioner of Patents and Trademarks at the next summit meeting between the two organizations.As a public service, feel free to detail your suggestions here, and I will pass them on to the committee!

Leave a Comment » | Intellectual Property, IPO, Israel, Israel IP, Israel Patent Office, News, Opinion | Permalink
Posted by Dr Michael Factor

Israel to become an International Search And Examination Authority for PCT

September 25, 2009

I am delighted to inform all readers this morning that the CTC has recommended to the PCT Union to appoint the Israel Patent Office as an International Search Authority ISA and an International Preliminary Exaination Authority IPEA of the PCT System

Apparently the decision passed with near-unanimous support followed by some political excitement. Syria, backed by Sudan and Algeria, opposed the initiative which passed after US led linkage to the Egyptian Patent Office being accorded similar status.

From an Israel Patent Office communication, it appears that implementation may take 2 years followed by a trial period where Israel Applicants will be able to elect the Israel Patent Office as International Search Authority. The incentive to do so will be reduced search fees, of about half that asked by the USPTO and EPO.

According to the official Documentation http://www.wipo.int/edocs/mdocs/pct/en/pct_a_40/pct_a_40_5.pdf Israeli applicants will be able to continue using the services of the EPO or the USPTO, however it is not clear whether in the long run Israeli Applicants will still be able to use the US and/or European Patent Offices.

Since Israel has a large number of scientists and engineers that speak many languages, it is not unlikely that with appropriate training, Examiners at the Israel Patent Office could become the best search authority. If they do a recruitment drive of Arabic speakers, they could eventually compete with Egypt to provide Arabic language searches (to those Arabic countries that will approve Israel as a search authority).
Indeed, in terms of skills and salaries, it makes sense for other countries to subcontract searches and perhaps examination to the Israel Patent Office in a similar manner to R&D being conducted here for many international organizations.

In a shrinking world, we believe that Israel should export search and examination searches (and also academic degrees). Firstly, the Israel Examiners will have to prove themselves.

There are only a very few Internationally approved Search and Examination Authorities. Even the United Kingdom Patent Office is not included in the list.

We see this as a great achievement for Dr. Meir Noam, the Israel Commissioner of Patents, and the examiners and support staff of the Israel Patent Office, Ms Li Maor who sits on the Israel Desk of WIPO and thank everyone who supported the initiative.

2 Comments | IPO, Israel, Israel Patent, Israel Patent Office, Israel Related, News, Patents, PCT | Permalink
Posted by Dr Michael Factor

Eli Lilly Wins Evista Ruling Against Teva

September 24, 2009

Eli Lilly & Co. have won a ruling that its patents for its Evista osteoporosis drug are valid, blocking an attempt by Teva Pharmaceutical Industries Ltd. to sell a generic version of the bone-loss treatment.

Following a temporary injunction back in April, in a ruling yesterday, U.S. District Judge Sarah Evans Barker has barred Teva from selling the drug in the U.S. before Eli Lilly’s patents expire in March 2014.

Evista, the drug based on raloxifene, generates income of almost $2 million a day, from sales in the U.S.

Teva, based in Petah Tikva, Israel, received U.S. Food and Drug Administration approval for its generic version of the drug just before the hearing began in March, and claiming that Lilly’s patents were invalid as being obvious, were prepared to market the drug at risk.

Lilly maintained that know-how was insufficient to lead drug companies to come up with raloxifene and the patents were valid and obtained a temporary injunction from Judge Barker in injunction.

in her 120- page decision, Barker wrote that “Teva has failed to meet its burden to demonstrate by clear and convincing evidence invalidity of the bone loss patents on the basis of obviousness”.

Teva plans to appeal the ruling, the company said in a statement.

The case is Eli Lilly v. Teva, 06-cv-01017, U.S. District Court, Southern District of Indiana (Indianapolis).

Leave a Comment » | drugs, pharmaceuticals, Teva | Permalink
Posted by Dr Michael Factor

Offensive Trademarks and Statute Of Limitations

September 24, 2009

Washjington redskinsAfter losing on Appeal in the U.S. Court of Appeals in Washington a couple of weeks back, the native Americans who feel that the Washington Redskins trademark is racist and offensive have appealed to the Supreme Court, see Supreme Court Asked to Weigh Redskins Case

The Appeal was refused by the Court of Appeals in Washington because of the Statute of Limitations, and so the court has side-stepped the issue of whether offensive trademarks should be allowed. the appeal is based on the claim that trademark issues never reach closure since circumstances change.

As fair as likelihood of confusion is concerned, I accept that trademark issues should remain open. As far as other grounds such as racism and offensiveness, I am not so sure, not least because there is little that someone, somewhere doesn’t find offensive.

As an ex-pat British Israeli, I don’t have the cultural background to relate to the feelings of American Indians but imagine that they may feel very strongly about the mark. Is it patronising and offensive? Perhaps, but the redskin shown is perhaps more dignified than the Robinsons’ golliwog.

Should offensiveness force a football team to change their name? not sure. Arsenal FC has a cannon logo, also for historical reasons. Possibly pacifists find this offensive. The UK Cricket team, Middlesex represents a county that no longer exists. It is perhaps offensive to those of indeterminate sexuality and/or sexual persuasion.

In 2001, Robinsons’ Jams and Marmalades gave up their gollywog logo. Maybe Israel’s peanut snack bald baby with ginger curl of hair (Bamba) is offensive to auburn and bald babies?

1 Comment | famous marks, trademarks, Uncategorized | Permalink
Posted by Dr Michael Factor

Brazilian Patent Office Issued Nutty Opinion

September 23, 2009

Article 12 of Brazilian Law 9279, of 14 May 1996 states that

The disclosure of an invention or utility model which occurs during the twelve months preceding the date of filing or priority of the patent application will not be considered as part of the state of the art, provided such disclosure is made:

 I – by the inventor

II – by the National Institute of Industrial Property – INPI, by means of the official publication of a patent application filed without the consent of the inventor and based on information obtained from him or as a result of his acts; or

III – by third parties, on the basis of information received directly or indirectly from the inventor or as the result of his acts.

The Brazilian Patent Office (National Institute of Industrial Property – INPI) has issued an Opinion in which “third parties” as appearing in Article 12 – III, does not include foreign (i.e. Non-brazilian) Industrial Property Offices.  Thus the Brazilian Patent Office understands that the grace eriod does not include official publication of a patent application by a foreign patent office, which is considered novelty destroying.

According to a newsletter recieved from Brazilian associates  MOMSEN, LEONARDOS & CIA., the “interpretation” appears to be more than the wording of the Law can reasonably hold, and may well not hold up if challenged in the courts.

In this regard we note that earlier this year the Israel Commissioner of Patents, Dr Meir Noam, has done something analgous regarding registered designs, where Israel Law (actually a regulation inherited from the British and never replaced) requires local novelty only. Based on premise that anything published on the Internet by a foreign Patent Office is accessible from Israel, he ruled that such publications are local novelty destroying, although other Internet publications are not.

I think the underlying “logic” – to use a polite euphemism – is similar. However, in both cases, the legislative assembly should update the rules, but even if they are tardy in so doing, that does not mean that the Patent Offices have authority to do so themselves.

Leave a Comment » | design, News, Patents | Tagged: | Permalink
Posted by Dr Michael Factor

Patent Backlogs Continue to Mount

September 23, 2009

backlog

According to WIPO, the backlog in pending patent applications around the world that are waiting for examination now stands at 4.2 million – see the following press release.

One way to make the examination system more efficient is, of, course, greater collaboration between the various national / regional patent offices.  Although there are differences regarding patentable subject matter and the degree of inventive step or non-obviousness required for a claim to be patentable, broadly standards are similar and novelty is supposed to be absolute.

The Israel Patent Law includes a highly efficient examination evasion procedure detailed in Section 17c, wherein the claims allowed by any of a long list of examining countries can be obtained in Israel without substantive examination.  Under the current Commissioner of Patents, Dr. Noam, the idea has been extended to include a positive ISR, allowance based on an allowed patent without formally invoking Section 17c and other efficiency improving innovations.

Associates in Australia have brought to our attention that

“in response to the economic downturn, the Australian Patent Office is offering applicants the chance to withdraw their request for examination and therefore to forgo the obtaining of patent rights in exchange for a refund of the official fee of Au $420″.  

This is, of course, another way to reduce backlogs.

3 Comments | Patents, WIPO | Permalink
Posted by Dr Michael Factor

Google’s IP Ups and Downs

September 23, 2009

googleGoogle is in the IP news again.  The Advocate General of the European Court, Luís Miguel Poiares Pessoa Maduro has issued an opinion in the Google Adwords Saga. In his Opinion delivered today, the Advocate General suggests that Google has not committed a trade mark infringement by allowing advertisers to select, in AdWords, keywords corresponding to trade marks. 

It is not clear, however, if the European court will take this position, although we note that this is, broadly speaking, the position taken by the courts in Israel.  See Israel Judge Allows Unregistered Trademarks to be Used as Google Search Terms.  Meanwhile, Google is being sued again, this time in India, on the same issue. See Google Sued by Indian Portal for Trademark Infringement.

The other Google story, is, of course, the controversial proposed settlement regarding making (out-of-print? orphan? all?) books available via Google. Here, the search engine has met opposition in both the US and in Europe, see House Judiciary considers Google Books deal and Groups call for EU scrutiny of Google book deal.

Personally, I think copyright law concerning printed material, software, music files and films needs urgent review. The law and technology are clearly out of sync since copyright law reflects 19th and 19th century attitudes to property and is totally inappropriate for the Internet Age. Nevertheless,  the United States’ approach as characterized by the Digital Millenium Act and the bullying tactics of the RIAA does not seem the way to go. No answers. Just questions.

Leave a Comment » | Copyright, trademarks | Permalink
Posted by Dr Michael Factor

Thailand to Join PCT Treaty

September 23, 2009

In a welcome development, Thailand is joining the Patent Convention treatment (PCT). It will be possible to file PCT applications in Thailand as of January 2010.

Phucket: Please note – PCT applications filed elsewhere prior to that date cannot be ratified in Thailand. Indeed, care must be taken to prevent the PCT application from becoming prior art, i.e. the Thailand application should be filed within 18 months from the priority, document of the PCT and within 12 months under Paris to claim priority.

Personally, I’ve never filed or prosecuted in Thailand. Indeed, I dont’ recal being asked by a client to quote for filing in Thailand, although apparently the firm has filed pharmaceutical applications there for various local ethical clients. I don’t imagine this new development will have much of an impact on my day-to-day work. Will there be a flood of Thai national phase applications into Israel? Who knows.

1 Comment | Patents, PCT, WIPO | Permalink
Posted by Dr Michael Factor

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