Four Suspected of Importing Fake Viagra into Israel Remanded in Custody

October 27, 2010

Judge Tamar Nayot has allowed four suspects accused of importing 75,000 fake Viagra pills to be remanded for six days following a request from the Haifa Tax and VAT Inquiries Department. apparently, this is follows a major operation by the Israel law enforcement agencies. In addition to tax evasion, there are trademark issues associated with the counterfeit pills.

Apparently, the pills, with a market value of NIS 5,000,000  were smuggled from Vienna on regular ElAl flights.   

Who says that the Israel Law Enforcement Agencies are impotent?

1 Comment | counterfeit, infringement, Intellectual Property, Israel | Permalink
Posted by Dr Michael Factor

Opposition Proceedings Adequate in Competing Trademarks Case

October 27, 2010

Under Israel Law, where two trademark applications for the same mark are pending allowance concurrently, the marks are considered competing marks, and, the Israel Patent and Trademark Office is supposed to  ascertain which mark takes precedence. The first to file is of importance, but equitable behaviour and widespread usage of the mark are also considerations.

Israel Trademark Application Nos. 197933 and 197934 to Vivartia, “7 Days” were filed prior to a competing identical mark being allowed.  This was not noted by the examiner as apparently their mark had not yet been entered into the database when the competing mark was examined. the competing mark was allowed and these marks were thus rejected.

Dr. Shlomo Cohen Law Offices argued on behalf of the applicants that the earlier mark was allowed by mistake and the marks should be considered competing marks. The Deputy Commissioner of Trademarks, Noach Shmulovich Shalev  ruled that since the applicants could oppose the allowed mark or initiate annulment proceedings, there was no need to disallow the mark and institute a competing mark proceedings.

1 Comment | Israel Patent Office, Israel Patent Office Rulings, Israel Trademark, trademarks | Permalink
Posted by Dr Michael Factor

Zer Matok (sweet bouquet) considered generic – case dismissed

October 27, 2010

Kadim Guidance LTD filed suit against Eli Mula – Liyat Flowers and against Shlomi Mulaim, alleging that their rights to supply candy bouquets under the name “zer matok” had been infringed.

The term Zer Matok means sweet bouquet.

Judge Eli Yifrach ruled that the term was generic. Attempts to obtain trademark protection had failed as the product, comprising arrangements of pralines and chocolates was descriptive, and the complainants had failed to prove that they had obtained a reputation for the product that was being infringed by the competition. Allegations of passing off, unjust enrichment, etc. were all rejected. The case was dismissed and costs of NIS 35,000 were awarded to each defendant.

1 Comment | passing off, trademarks | Permalink
Posted by Dr Michael Factor

Late submission of Evidence Allowed in Opposition Proceeding Concerning an Israel Patent to Merck

October 27, 2010

 

In opposition proceedings number IL 172563, concerning a Merck patent application for “Phosphoric Acid Salt of a Dipeptidal Petidase-IV Inhibitor” Teva requested permission to submit an Opinion by a medical expert concerning experimental evidence conducted under his supervision.  The opinion was relevant, but the correct time for submission thereof was together with other evidence. 

The regulations for patent opposition proceedings in Israel and the general civil law proceedings require all evidence to produced at the proper time. Substantive issues generally take precedence over these formalistic requirements. Since Teva didn’t have the material at the proper time since the experiments had not been performed, there was no issue of bad faith in the late submission, which was not a delaying tactic since the evidence simply was not then available. However, this late-filed experimental evidence was crucial in determining whether Merck deserved a patent or not, and the scope thereof. Consequently, the Deputy Commissioner of Patents ruled that late submission of the evidence was allowable, but awarded costs of NIS 5000 to Merck as a form of punishment to Teva for deviating from the correct procedure.

We now await the main ruling.

The case: Opposition re IL 172563 to Merck.

1 Comment | drugs, Intellectual Property, Israel Patent, Israel Patent Office, pharmaceuticals, pharmaceuticals and Biotechnology, Teva | Permalink
Posted by Dr Michael Factor

Israel Importer of Fake Cigarettes Found Guilty of Smuggling but Acquitted of Trademark Infringement on Technicality

October 27, 2010

The Haifa magistrates court has found an importer guilty of smuggling fake Marlboro cigarettes. Some 19,122 packages of the cigarettes were imported from the Ukraine in a shipping container described as containing paper napkins. Philip Morris, Israel, denied knowledge of the shipment which are apparently fake.

The import taxes and VAT on the shipment should have been some 2.3 million shequels. 

The importer has bene found guilty of smuggling, false labeling of the container and supplying false information. Due to failure to provide certified records from the trademark department of the Israel Patent Office, the importer was acquitted on charges of trademark infringement.   

 T.P. 1482-06 State of Israel Justice Dept. vs. Wexler, Menachem

1 Comment | famous marks, IPO, Israel Trademark, trademarks | Permalink
Posted by Dr Michael Factor

Class Action filed Against the Israel Commissioner of Patents

October 22, 2010

Following criticism of Dr. Meir Noam, the Israel commissioner of Patents, for not publishing basic details of new Israel patent applications in the reshumot, the official government publication (see Israel Commissioner of Patents Criticized by Chairman of the Knesset Constitution, Law and Justice Committee) a couple of Haifa inventors / applicants Yair Nissan and Yan Lishinsky have filed the class action against the Commissioner of Patents and the Patent Office via the law offices of Adv. Ronen Kenan and Adv. Eran Goren, for NIS 6,000,000.

If they can prove their case that the Israel Patent Office collected NIS 160 (i.e. about $45 US) for a service that they technically failed to provide, then everyone who filed applications recently will be entitled to a refund, and, for filing the class action which is a public service, the complainants will be entitled to a large chunk of that. Not a bad bonus for people mostly motivated by civic duty.

The sums of money collected for this service do add up. Apparently to about NIS 3,000,000 a year.  I suspect that the cost of creating, updating and hosting the database and the underlining website is at least that figure though. Adv. Goren sees things differently. according to his statements reported on Ynet, uploading by a secretary clicking on a button is obviously cheaper than printing the pamphlets.

According to Advocate Goren “but the problem isn’t only financial, but it is mainly legal, relating to the validity of the Internet publication which is critical to defence of the copyright. [sic]“

MUSINGS

We think it most unlikely that even if the courts rule that publication ha to be in the reshumot, they will rule that failure to perform the first publication – which includes title, date, priority date if any, and name of applicants and inventors – in the correct manner will rule that in consequence of this failing, all patents filed in the past 4 years are unenforcable. the learned attorney - who until now was unknown to me, also gets copyright and patents muddled, so I don’t overly value his judgement and legal acumen. 

The test case, is Israel Patent Number 192520 titled “Switching apparatus and method”. Using the online database of the patent office, I could find this information from home. So can anyone else. It is abstracted by Inpadoc and so I could search by application name, inventors, title, number or filing date via Espace or Delphion. The electronic publication works.

 Locating the details in the correct official pamphlet would have been difficult. Indeed finding the correct official pamphlet in a library or patent office is not easy.

The application never went anywhere abroad and was probably a get-rich-quick invention. Maybe now the inventors will get rich. Who knows?

I suspect that modern digital printing technology rather than physically setting type has made printing cheaper as well. Official fees were set in about 1968 following the legislation of the 1967 Israel Patent Law, and are updated twice a year in accordance with the cost of living index. Since printing costs do not go up with inflation, there is no real correlation between printing costs and the fee charged.

Even if the courts rule that a refund is required, I suspect that the service charge that the various patent firms will take for handling this refund will be more than the refund is worth. If the patent office decides to refund the money directly, then for the 2/3 of applicants that are foreign applicants, the bank charges will eat up the sum.

On display in the new patent offices are the original hand written patent registers. I am not sure that the second publication fee and fees for updating the register aren’t intended to pay for a scribe to update these ledgers with his fountain pen. Maybe I should persuade one of my clients to file a class action on this. After all, the fees are higher and the period over which the patent office has failed to update these ledgers is far longer than a mere four years. Furthermore, the term “pinkas” is more likely to imply a hand-written ledger than the term “reshumot” to mean a printed publication.

Indeed, Dr Noam is just one of many Commissioners to fail in their duty in this regard. We can sue all previous commissioners that are still with us, and the estates of those that are not.  

Dr Noam is coming to the end of his term of office as commissioner, and it would be a real shame if this incident will leave a stain on a remarkable term of office in which he turned around a captainless ship and brought it to a safe harbour in their plush offices; in which the patent department received ISO certification; in which the patent office received recognition by WIPO as being of the standard to provide International Search Reports and Preliminary Examinations of PCT applications and in which Israel joined the Madrid Protocol.

1 Comment | Intellectual Property, Internet, IPO, Israel, Israel IP, Israel Patent, Israel Patent Office, Patents, Uncategorized | Permalink
Posted by Dr Michael Factor

Israel Commissioner of Patents Criticized by Chairman of the Knesset Constitution, Law and Justice Committee

October 20, 2010

According to an article on Ynet, the Internet site of Yedioth Aharonot, Israel’s most widely read, daily newspaper,  Dr.  Meir Noam, Israel Commissioner of Patents has been harshly criticized by the Chairman of the Knesset Constitution, Law and Justice Committee, MK David Rotem, for:

  • Failing to print the basic details of new patent filings
  • Nevertheless, collecting the publication fee from all applicants over four years, amounting to some NIS 3,000,000

The background to the criticism is that four years ago Dr. Noam decided to publish the data regarding new applications on the Internet rather than in the Register of Patents.  However, acording to Rotem, the Law requires them to be printed, and publication on the Internet is insufficient.

COMMENT

Section 16 of the Israel Patent Law requires publication of the applicant, title of the invention, filing date and priority claim as soon as possible after filing. The publication is to be in the Rishumot or formal register.

Section 16 also makes it clear that the Justice Ministry and the Knesset Constitution, Law and Justice Committee are responsible for defining how this should be accomplished. The relevant regulation, Regulation 32, also refers to publicizing or publishing in the Rishumot.  It doesn’t seem to mention printing per se.  Section 166 which defines the register and the sections that define the official fees don’t relate to printing, nor does the list of fees. Therefore I am not certain whether publishing in a searchable database on the patent office website is publishing.

It should be noted that the printed register took a long time to prepare and publish. The data is more easily searched and more quickly available over the Internet than in the printed register, although to some extent, reviewing all new applications each month is easier in a printed register. From an ecological perspective, the move to the Internet is welcome. I’ve reviewed the Patent Law and Regulations and can’t see a basis for Rotem’s decision that there should be a printed publication. If I’ve missed it, and the report on Ynet seems to imply that there is such a requirement, then MK David Rotem may be correct that this is ultra vires, and the change should probably have been made by the Minister of Justice or the Knesset, not by Dr. Noam who lacks the authority.

The question goes to the heart of an ongoing battle between the formalists who believe that the Law should be interpreted fairly literally, and the pragmatic-moral camp, led by the former Israel Supreme Court Chief Justice Aharon Barak. They don’t generally let the little things like the words of the law get in the way of their version of the spirit of the Law.

Former Supreme Court Judge Chaim Cohen said of the Reshumot:

Publication in the Reshumot has a special value in that what is publicised there – and only there – is considered as published in practice: even though the man of the street never reads the rishumot, he cannot claim (in his defence) that he was unaware of what was published there, or at least creates the assumption of knowledge since the mass media will bring to the public that of public interest…

…; it creates the legal fiction that despite knowing that the  citizen doesn’t read the Reshumot, it is as if he has read, remembers and knows everything publicized there.

Free translation of Haim Cohen, The Mishpat, Bialik Publishing House 1991.  

The Knesset certainly hasn’t given IP legislation the priority that practitioners like myself, think it deserves. The question is: To what extent does this mean that judges and commissioners should creatively interpret the Law to the extent that they are ignoring what it says?

It should be noted that a few months ago Dr. Noam decided to interpret the archaic design law to interpret the bar to registration of being ”sold or published locally” to include described on the Internet on a foreign Patent Office website.  I argued that this Commissioner of Patents decision published in an official Circular was ultra vires and required Knesset legislation. I stand by that position.  See New Israel Design Regulations which reports on Commissioner Circular M.N. 64.

Civil servants in the Justice Ministry have tried to reach a compromise. Meanwhile, a much-needed amendment to the Law has been delayed until both sides can come to a mutual understanding.

See the complete Y-Net (in Hebrew) here: http://www.ynet.co.il/articles/0,7340,L-3971804,00.html

2 Comments | Israel Patent, Israel Patent Office, Israel Related, Patents, Uncategorized | Permalink
Posted by Dr Michael Factor

Israeli Hospital Inventors to Receive Royalties for Their Inventions

October 18, 2010

 

Cutting the cake

Globes, the Israel business newspaper has disclosed that after years of negotiations, an agreement has been reached where researchers at Israeli hospitals will be entitled to a 35% royalty from their invention, the hospital research fund will receive 30%, the hospital itself will receive 25%, and the government’s share will be 10% which will be divided equally by the Office of the Chief Scientist of the Ministry of Health and the Finance Ministry.

Background

Section 132 of the Israel Patent Law states that employee inventions are owned by the employer. Section 137 relates to inventions by government employees and states that their inventions are State property.  University researchers in Israel are generally awarded 40%-50% royalties by their university. Medical researchers working at private or trust-owned Israeli hospitals generally received royalties of about 40%. Until the recent agreement reported in Globes, those working for government hospitals typically did not receive anything.

In addition, with many government hospitals, there has been no mechanism in place for drafting and filing patent applications. As a result the patent applications either weren’t filed at all, or they were filed privately by the inventor, often when on sabbatical abroad.

This state of affairs has had serious repercussions for the public good. In 1996, Dr. Zeev Treinin, a veterinarian working for the civil service, discovered a promising treatment for AIDS. There was no mechanism for him to file a patent application and his discovery was published in a scientific journal. Without the possibility of a patent, no drug developer was willing to invest in commercializing the treatment.

Since it is true that hospital researchers are generally civil servants, it could be argued that the employer (the State) should own their intellectual property. Indeed there was a private member’s bill in the Knesset some years ago that took that position, although it offered the inventors a paltry three months salary as a bonus.

Israel’s former Accountant General Gal Zlikeh launched an enquiry into the issue. See Israel Finance Ministry Accountant General Launches Probe into IP missapropriation by Civil Servants.

Last year the Israel government sued for royalties in a patent allegedly invented by a government employee for a medical adhesive with blood-clotting factor in State of Israel vs. Omrix.

In that instance, the Government, represented by the Law Offices of Dr. Shlomo Cohen, sued Omrix and Johnson & Johnson who had bought the company. The medical doctor who claimed to have been the inventor was a witness for the State. Because the complainants alleged inventor fraud the corresponding patent in the US was rendered unenforceable. 

Comments

We think this carrot approach will be more effective than wielding a stick, particularly as the government seems unable to do so effectively.

We are also happy to see that the 2004 proposal by Ofer Pines Paz and others to restrict royalties to three monthly salaries seems to be off the table. Regardless of whether one is a liberal capitalist or a Marxist, that plan was impractical and it is good that it is buried.

JMB Factor & Co. was instrumental in bringing this issue into the public eye by organizing and cosponsoring a Seminar with Ono Academic College and WIPO on service inventions last year. At the time Dr. Yaron Zelikha, former Accountant General; MK and medical specialist Dr. Rachel Anato MD, and former MK Molly Polishuck Bloch all gave their perspectives. See Whose Invention is it? – A report on a high-profile seminar in Israel, by the IsraKat.

3 Comments | Academia, Intellectual Property, Israel IP, Israel Patent, Israel Related, News, Opinion | Permalink
Posted by Dr Michael Factor

Injunction Issued Against Performance of Karius and Bactus

October 17, 2010

Karius and Bactus is a children’s book written by Norweigan Author Thorbjørn Egner.

The book is about two tooth trolls Karius and Bactus (puns on “caries” [cavities] and bacteria) that live in the mouth of a little boy named Uzzi who likes sweet food and doesn’t brush his teeth. Consequently they can build their homes in his teeth as long as Uzzi doesn’t learn personal hygiene. 

The book has been translated into Hebrew and many other languages and is a favorite of kindergarten teachers and parents trying to encourage proper dental hygiene.

In 1982, Avirama Golan wrote the lyrics for a number of songs that were set to music by Misha Balcrovich and became the basis for a popular musical starring Duby Gal, a well known Israeli entertainer. Despite requests for recognition, the lyricist and composer never received royalties. 

Gal’s defense included:

  • He starred in the show and ad-libbed with the adults in the audience and thus was a co-author.
  • He had a financial stake in the show and thus had entrepreneurial rights.
  • The success of the show was mostly due to him.
  • The songwriters gave him their rights.
  • The Norwegian author authorized him to put on the stage play.
  • The musical had been performed since 1982 and therefore the Statute of Limitations prevented the complainants from being awarded damages.
  • The new version of the musical reworked the songs and so they were new creations

District Judge Dr. Dafna Avnieli ruled that the Statute of Limitations only prevented claiming damages for performances prior to 2001, seven years before filing suit. She went on to rule that without documentary evidence to the effect that the rights were transferred, the complainants were entitled to royalties. The new versions of the songs did not detract from the original lyricist and composer’s moral rights to be credited and to receive royalties as the variations were minor. 

The entrepreneurial activity, permission of the author and the fact that Duby Gal was the main star did not detract from Avirama Golan and Misha Balcrovich’s moral rights and entitlement to royalty. 

Judge Avnieli issued a permanent injunction prohibiting Gal from performing the musical, awarded legal costs of NIS 40,000 against him and his co-defendants, and requested financial details regarding the show from Gal and for Golan and Balcrovich to decide what form they want compensation in.

The case T.A. 1551-08 Golan Avirama and others vs. Gal Duby and others.

1 Comment | Copyright, Israel Court Ruling, trolls | Permalink
Posted by Dr Michael Factor

Israel Customs Give Infringing Footballs the Boot

October 13, 2010

In one action earlier this month, the Israel Customs Authority confiscated 3100 counterfeit footballs bearing logos of European Premier League clubs including Real Madrid, Arsenal and Chelsea. In a separate trademark enforcement action they confiscated a container of counterfeit football boots bearing the Lacoste logo. Allegations that an isolated dock in Haifa Port has been converted into a soccer school have been rigorously denied.

1 Comment | trademarks | Permalink
Posted by Dr Michael Factor

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