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.
Leave a Comment » | 
China, Intellectual Property, IPO, Israel, Israel Patent, Israel Patent Office, Patents, PCT | 
Permalink
Posted by Dr Michael Factor
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.
Leave a Comment » | drugs, Intellectual Property, Israel, News, Patents, pharmaceuticals, pharmaceuticals and Biotechnology, Teva | Permalink
Posted by Dr Michael Factor
אנו מודיעים בצער רב על פטירתו של השות הבכיר במשרדנו
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
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.
Leave a Comment » | Uncategorized | Tagged: personal | Permalink
Posted by Dr Michael Factor
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?
2 Comments | Intellectual Property, trademarks | Permalink
Posted by Dr Michael Factor
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.
Leave a Comment » | Intellectual Property, IPO, Israel, Israel IP, Israel Patent, Israel Patent Office, Israel Related, Israel Trademark, News, Opinion, Patents | Permalink
Posted by Dr Michael Factor
Claiming patent infringement, Pfizer Inc. has filed a complaint in the US District Court in Delaware, requesting an injunction to block Teva Pharmaceutical Industries Ltd from selling a generic form of its Zyvox antibiotic. The move follows Teva’s filing an abbreviated new drug application with the US Food and Drug Administration, seeking regulatory approval, which Pfizer claims is patent infringement. Zyvox is used to treat pneumonia and skin infections and has global sales of about $1.1 billion a year. The Teva generic would threaten Zyvox’s US sales, which totaled about $575 million. The Zyvox patent may be renewed until 2014, unless Teva can somehow invalidate it.
3 Comments | drugs, infringement, Intellectual Property, Israel, Israel Related, pharmaceuticals, Teva | Permalink
Posted by Dr Michael Factor
The Syrian Arab Republic acceded to the Protocol of the Madrid Agreement concerning the International Registration of Marks on 21 December 2009.
The Madrid Protocol is now scheduled to enter into force in Syria on 21 March 2010. Source: WIPO treaty notification, 21 December 2009.
Comment
This raises three interesting issues:
Leave a Comment » | Uncategorized | Permalink
Posted by Dr Michael Factor
A South African entrepreneur Dimitri Philippou, has registered the following phrase as a trademark: “You can’t be a virgin all your life it’s time®”, this despite heavy opposition from Richard Branson’s Virgin Enterprises. Leaving aside the clear lack of accuracy in the phrase – think of nuns, the Madonna (both the Virgin Mary and the rock singer), the victims in episodes of CSI, Law and Order, Quincy, books by PD James where the surgeon conducting the post-mortem notes that the female victim in virgo intacta, Philippou’s company Bodtrade 54 intends using the slogan for one of his core businesses “Bodtrade Hotels” or “Bodtrade Telecoms”.
With a name like Bodtrade, I suspect that the services provided are the sort of thing that should best be used with discretion and without leaving itemised phone statements for family members to find. That as may be, it contrasts nicely with the Virgin candles ruling in Israel see http://blog.ipfactor.co.il/2007/11/10/david-loses-virgin-to-goliath/, where Virgin enterprises succeeded in crushing a small business making candles out of olive oil, presumably for sacramental purposes. Unlike the classification for candles, Virgin Enterprises does have telecommunication and hotel businesses, so the case for Branson’s conglomerate arguing dilution, and if my suspicions are correct, tarnishing, are far stronger than they were in Israel. Generally, slogans of the type above are not considered in Israel at all, with the notable exception of “a diamond in your pocket” http://blog.ipfactor.co.il/2009/03/17/israel-patent-office-allows-descriptive-slogan-to-be-registered-as-a-trademark/.
Although the UK decision that virgin is being used a noun is, in my opinion correct, it is apparently the first time in the history of Virgin Enterprises Limited, started by Branson in 1970, during the free love years, that a company outside his group has managed to secure a trademark registration including the word ‘virgin’ apart from marks registered for olive oil in which the word is descriptive (at least according to most – with the Israel Patent Office presumably dissenting).
1 Comment | Fair Use, famous marks, Intellectual Property, News, trademarks, UKIPO, UKPTO | Permalink
Posted by Dr Michael Factor
The PCT has announced that its Online Document Upload Facility became fully operational on Monday, 18 January, 2010. This facility permits PCT applicants and/or their agents to submit documents relating to international applications in PDF format, via the WIPO website.
One advantage claimed for this development is that post-filing electronic documents can be submitted quickly and efficiently to the IB, thus avoiding the costs and delays relating to paper mailing whilst overcoming image quality problems that can result from fax transmissions or paper scanning.
However, the service is not to be used for the initial filing of PCT international applications online to WIPO Geneva as a Receiving Office, only for subsequent submission of later-filed documents that are normally addressed to WIPO in its capacity as International Bureau only. Furthermore, the process only works if the International Bureau has already received the Record Copy from the receiving Office and started processing the application.
The long list of documents that may be uploaded includes amendments to the claims under PCT Article 19,requests for recording change of person, name, address, etc., notices of withdrawal, requests for Supplementary International Search (SIS), and where applicable, translations of international applications and sequence listings under PCT Rule 13ter for SIS purposes, informal comments on the written opinion of the International Searching Authority and general correspondence for the attention of the IB. Further guidelines are to be found at http://www.wipo.int/pctdb/en/
Comment
All the submissions listed are text based submissions that I routinely fax and in addition to the fax receipt generated by my system, I get an acknowledgement from WIPO by return. I’ve never had a problem with the faxed document being considered unclear. Thus I am not sure that this development is in any way significant, except for the possible eventual reduction in paper usage.
**********************************************
On 14 January 2010 President Barack Obama told technology executives at the Forum on Modernizing Government:
”Believe it or not, in our patent office — now, this is embarrassing — this is an institution responsible for protecting and promoting innovation — our patent office receives more than 80 percent of patent applications electronically, then manually prints them out, scans them, and enters them into an outdated case management system…This is one of the reasons why the average processing time for a patent is roughly three years.”
It’s a great quote. So what if Barak is apparently wrong and the USPTO stopped doing that back in 2006???
**********************************************
Another great quote: Dr. Michael Bart, the Head of the PCT Receiving Office in Israel told me that a colleague at the EPO stated that “A paperless patent office is like a paperless toilet. “
Incidentally, the Israel Patent Office is also gearing up for electronic filing.
What of the ecological issues? Well the following story is absolutely true: whilst working at the UK National Physics Laboratory, NPL, in the early Nineties, I used to receive the internal newspaper of the Department of Trade & Industry. Then secretary of State for Trade & Industry Michael Hesseltine requested ideas for minimizing the paper-chase to be submitted on the requisite form in triplicate.
And finally, the ultimate all-in-one machine – one of my inventions, that I considered filing - the combined fax, printer, photocopier with shredder and bin. Does the whole process without human intervention.
1 Comment | Intellectual Property, Israel Patent Office, Patent trivia, Patents, PCT, US Patent Office, USPTO, WIPO | Permalink
Posted by Dr Michael Factor
In yet another Israel Patent Office Circular (M. N. 77) designed to increase productivity, to minimize duplication of resources and to shorten the examination process, the Israel Commissioner of Patents, Dr. Meir Noam has decreed that in addition to filing details of citations in corresponding applications abroad as required under Section 18 of the Law (Duty of Disclosure), henceforth, applicants are required to submit a copy of all responses made in corresponding cases as far as Novelty and Inventive Step is concerned. This response may include claim amendments submitted to overcome the Official Actions made elsewhere, however the applicant must explain how the claim amendments overcome the prior art objections.
Failure to submit such arguments will be considered as failure to fulfill the Duty of Disclosure. Furthermore, the applicant is required to submit all prior art directly relevant to the invention that is known to the applicant.
The new ruling applies to all applications for which a Notice Prior to Application has not yet issued.
Appended to the Circular is an amended Notice Prior to Examination which also states that applications filed after 23 January 2010 having more than 50 claims will incur additional filing fees.
The new disclosure rules were suposed to be effective immediately, but after lobbyign from the AIPA and other representative bodies, a reprieve has been allowed to enable practitioners to reorganize. The new procedures will come into effect as of 30 June 2010.
Comments
As with many efficiency measures adopted by the USPTO, it is not clear whether this development will actually increase or decrease Examiner’s workloads and affect pendency time. However, it certainly will increase the work load of the patent practitioners and presumably result in more expensive prosecution for the applicants. On the other hand, we can assume that fewer invalid patents will issue, and there could be a corresponding decrease in oppositions and litigation.
There has been a difference of opinion within the profession as to the exact Duty of Disclosure requirement and the necessity and advisability of submitting prior art not cited against corresponding applications abroad but nevertheless known to the applicant. The current circular renders such arguments moot, and details of all prior art known to applicant, including, inter alia, that submitted in an Information Disclosure Statement (IDS) should now certainly be submitted.
The appended amended Notice Prior to Examination appears to be an implementation of the Notice of 10 December 2009 wherein the Commissioner of Patents and Trademarks, Dr. Meir Noam announced that the Constitution, Law and Justice Committee of the Knesset have decided to issue a surcharge of 500 NIS for excess claims beyond 50. It is not clear when the excess claim fees are due, but from the Notice, it seems that they are due on filing, and failure to pay will hold up examination. Presumably there will be a follow-on Circular that clarifies the issue, but I suspect that the excess claim fees will be incurred on responding to the Notice Before Examination, not on filing. At present, Israel examiners tend to relate to the independent claims only. One hopes that this excess claim requirement indicates that all claims will henceforth be examined on their merits.
1 Comment | Intellectual Property, IPO, Israel, Israel IP, Israel Patent, Israel Patent Office, Israel Patent Office Rulings, Israel Related, News, patent search, Patent trivia, Patents | Permalink
Posted by Dr Michael Factor
You are currently browsing the The IP Factor blog archives for January, 2010.
