Patent Oppositions are tricky things. Apart from requiring a familiarity with the Patent Law and Ordinances, the parties are requires to be familiar with Civil Procedural Law, since this is used by the Patent Office as a default position.
Despite having read the Civil Procedural Law when I did my law degree, I don’t remember the small print and whenever I’ve been involved in oppositions, I’ve looked after the substantial stuff and had an attorney-at-law handling the formalities – there’s no shortage of Israel attorneys-at-law.
Even when one knows the Law, commissioner circulars and the legal precedents, decisions can be surprising.
Anyway, the unfortunately named Tami Bar (n. b. Tami Bar is a trademark for both a chocolate bar and a water filtration unit) is opposing IL 168574 to the Vulcani Institute of the State of Israel, represented by Reinhold Cohen group. Dr. Bar is opposing the patent unaided, and has, not surprisingly, filed the wrong papers at the wrong time, resulting in the lawyers of the applicant filing a request for the statement of claims to be deleted.
The Judicial Review Officer, Ms. Ya’ara Shoshani Caspi, has shown leniency to Dr. Bar regarding a number of formalities, noting that she is not represented and that she is essentially defending the public’s interest by opposing a patent from granting, so the case should be decided on its merits and not on formalities. She goes on to point out that she can award greater or lesser legal costs as a more moderate form of punishment for formal transgressions.
I am rather pleased with this ruling as I criticized the Deputy Commissioner of IP in an earlier case for punishing one of the parties for late admission of evidence, since with regard to patents issuing or not, I consider the substance more important than the formalities. I am, however, a little critical of a statement in the ruling, where “the late-filed statement of claims(pleadings) are canceled, since the evidence in the response essentially includes all the facts.” – If papers filed at the wrong time are cancelled where cancelling them has no effect on the outcome, then what’s the point of cancelling them?
I would generally advise the opposer to employ professional counsel. Even serial opposers like Dr. Gil Tomer of Unipharm, who sometimes files oppositions unaided, then transfers the cases to an attorney when the applicant files a response. If Dr Bar has grounds for the opposition she should be able to recoup the expenses incurred.
