Israel Patent Attorney Qualifying Exams

November 29, 2011

The Israel Patent Office has informed that henceforth, details of examination dates for candidate patent attorneys will only be published on the Official Patent Office website.

COMMENT

From a quick look at the register, I note that there are only about 173 licensed practitioners that have the three years’ post licensing experience to mentor trainees. Since the previous commissioner, Dr Meir Noam, required registration of trainees, the Israel Patent Office has contact details of potential candidates. The Israel Patent Office also has a mailing list that one can subscribe  to.

In consequence of the above three facts, it seems fairly trivial for the Israel Patent Office to effectively actively inform all mentors, candidates and their mailing list of exam sittings. It seems a pity to think that someone might miss a sitting through not avidly monitoring the website, whose links often don’t work properly, and whose layout keeps changing.

Although according to regulations, the Exams should take place three times a year, in practice, they occur just under twice a year.  There is frequently insufficient notice. This development favors the bigger firms with many trainees, who can more easily see what’s happening. It discriminates against the hardy perennials who keep failing and may not be monitoring the patent office website.

Being a good Samaritan, literally – living as I do in Samaria – I will endeavor to keep my readers informed!

Leave a Comment » | Academia, Israel, Israel Patent Office, Patents | Permalink
Posted by Dr Michael Factor

Israel Judge Refuses Class Action Against Google Books

November 29, 2011

Google Books scans books and stores a searchable electronic copy on Internet accessible servers, making a short extract of 2-3 lines available to searchers, together with name of author, title, publisher and year of publication.

If the authors consent to take part in the project, the can allow a larger extract t be available and in return, a link to online suppliers of the book is provided.

Jonathan Bruner, the author of “What you see from there” filed a Class Action against Google Books, on behalf of Israeli Authors whose copyright was he considers infringed by this.

In her ruling, Judge Tamar Bazak Rappoport refused to allow this to be considered a Class Action. She considers the Law of Class Actions to restrict the procedure to trade related disputes where a supplier or vendor provides a service to a large group of people. In the current instance, this is not the scenario. Google considers the authors who work with them as partners. That as may be, those who do not join the program are not clients or customers.

Regardless of whether there is a case of Unjust Enrichment or Copyright infringement resulting from Google’s activity, following the Israel Supreme Court Precedent 3126/00 State of Israel vs. E.Sh.T. Project Management and Personnel LTD, 2003, the instances where a Class Action is appropriate is limited to vendor-customer type cases.

She threw out the request for the case to be considered a Class Action and ruled NIS 10,000 to Google.

Class Action Ruling11319-04-11 : Bruner vs. Google Inc., 23 November 2011, Judge Tamar Bazak Rappoport

5 Comments | Class Action, infringement, Intellectual Property, Internet, Israel, Israel Copyright, Israel Court Ruling, Israel IP | Permalink
Posted by Dr Michael Factor

Judy Dvora Simchi of the Trademark Department of the Israel Patent Office Passes Away

November 28, 2011

The Israel Patent Office has notified the profession that Yehudit (Judy) of th trademark department has passed away. The funeral was on Sunday in Jerusalem, and the family will be observing the seven-day mourning period in the family home in Maale Adumim.

Leave a Comment » | trademarks, Israel Patent Office Rulings, Israel Trademark, Israel IP, Israel Patent Office | Permalink
Posted by Dr Michael Factor

Filing Evidence in English In Oppositions Proceedings at the Israel Patent Office

November 21, 2011

Jonathan Schreiber filed Israel trademark Number 222275 for Metabolin, a product to assist in dieting by slowing the metabolic rate, which, when it was allowed, published for opposition purposes and Merk KGaA, represented by Gilat Bereket & Partners of the Reinhold Cohen group, filed an opposition.

The evidentiary Declaration submitted by Merk, ran to over 150 pages, all in English. The applicant, Mr Schreiber, who apparently is acting without representation, requested that this be translated into Hebrew and Ms Yaara Shoshani Caspi ordered that Merk do this, based on applicant’s claim that he didn’t understand English.

Merk / Gilat Bareket appealed this decision. they argued that they weren’t given an opportunity to oppose Schreiber’s request, in contravention of Circular M.N. 79 and of natural law, and should have had 20 days to respond. Substantively they argued that Schreiber was the sole shareholder of Anderson Medical LTD, whose website included various languages including English, and thus concluded that he understood the language. Furthermore, by providing affidavits in English, the witness would know what he was testifying and third parties would be able to access the material.

Ms Caspi Shoshani rejected the argument that the website indicated that Schreiber knew English, understanding that this merely indicated that he could have material translated at his expense. Substantively however, evidence should be filed in Hebrew or Arabic, but if both sides agreed to English being used, that was acceptable. There was no reason why applicant should bear the costs of translation.

Consequently Schreiber was in his rights to have documents translated into English. She suggested that if Merk were prepared to focus the discussion on relevant passages only, they could have these translated and forgo translating the full 150+ pages.

She noted that were she to come to the understanding that Schreiber did in fact have a good command over English language during the hearing or from his submissions, she would award damages to Merk, regardless of the final ruling.

COMMENT

I have no idea what is in the 150 pages, but can well believe that for an Israeli, this quantity of material in English is tiring. One wonders if it is necessary and it appears that Shoshani Caspi had her doubts as well.

There is an unfortunate practice, sometimes employed by litigants, of burying the opposing party in enormous quantities of material.  Legal Counsel are often not responsible, since if their client provides large quantities of evidence, they would generally file all of it as failing to do so could be construed as malpractice. Consequently costs escalate.

From the way he writes his name in English in the trademark application and from the English description which is clearly a literal word for word translation from Hebrew into English of the goods covered by the mark, I think it is self-evident that Yonatan Shreiber is not able to easily review 150 pages of material in English.

2 Comments | Israel IP, Israel Patent Office Rulings, Israel Trademark, trademarks | Permalink
Posted by Dr Michael Factor

Requesting Reconsideration of an Israel Patent Office Decision

November 21, 2011

Berik Design USA Inc. , and Greenstar Hong Kong Ltd.,  (“Opposers”) represented by JMB, Factor & Co. are opposingIsrael pending trademark Nos. 227959 and 227960 by No Fear International LTD, (“Applicant”) represented by Shlomo Cohen & Co.

The following interim ruling relates to a request by Applicant’s counsel to have a decision of the Patent Office Adjudicator reconsidered.

BACKGROUND

Shortly before the deadline for filing a response to the Opposition, the Applicant requested a two month extension to file their response and legal arguments against the Opposition , but the Patent Office granted one additional month only.

Claiming that the Opposers were uncooperative and that obtaining evidence from abroad was problematic, counsel for Applicant requested that this decision be reconsidered.

The Applicant did not provide JMB, Factor & Co. (the Opposers’ Counsel) with a copy of their request, as is customary.

The Adjudicator requested the Opposers’ respond to the Applicant’s request. This was particular difficult for the Opposers’ Counsel, since they had not been provided with a copy of the request. The Opposers’ Counsel spent many days attempting to obtain a copy of the request from the Patent Office, a task which proved to be difficult since the clerk handling the matter was on vacation at the time.

After finally obtaining the details of the request, JMB, Factor & Co., responded to it,  informing the Adjudicator that in principle, the Opposers’ do not oppose the Applicant’s request for an additional month’s extension. However, the Applicant’s counsel  had never contacted them to request such an extension. Furthermore, the Opposers’ Counsel requested the imposition of costs on the Applicant for the time spent in obtaining a copy of the request from the patent office and in responding to it..

The Ruling

According to the Adjudicator for Intellectual Property, Ms Yaara Shoshani Caspi, there is a list of instances where reconsideration of a ruling is legitimate, that is detailed in Appeal No. 1574/11 Strauss Marketing LTD. vs. Moshe Orman, 2011. In her opinion, the current situation does not fall into an appropriate category and thus the decision should not be reconsidered.

Nevertheless, Ms Caspi Shoshani went on to look at the specifics of the case, and noted that the counter-case should have been filed by 30 August 2011, but the request for an extension was only received on 4 September 2011, albeit dated 24 August 2011. The applicant claimed to have relied on a reminder letter from the patent office dated 14 July 2011, but there was a general letter from 31 March 2011 from the trademark department of the patent office to the effect that no reminders would be sent.

Consequently, the request for an extension was rejected and costs ofNIS1500 were awarded to the Opposers.

Following the ruling, the Applicant’s Counsel requested the Adjudicator to reconsider her decision regarding the extension and the amount of the damages.

The Applicant has since filed his response, a copy of which the Opposers’ have yet to receive. The Adjudicator has since ruled that the since the response has now been filed, the request for an extension is moot. Furthermore, the Arrbitrator has ruled that the level of the costs awarded shall not be amended.

Opposition to Israel TM 227959 and 227960, Berik Design USA INC. V. No Fear International LTD.

COMMENT

My brother Aharon, head of trademark department in our firm won this little skirmish, which is nice. Of more importance of course, is to win the opposition proceedings.

It is quite unreasonable for something to take 10 days to reach the patent office from a law firm that uses couriers, and in the age of faxes. Furthermore, regular mail shouldn’t take that long to arrive, and important documents sent by mail could be sent registered or express mail. I think Ms Shoshani Caspi’s ruling reflects this.

Leave a Comment » | Intellectual Property, Israel Patent Office Rulings, Israel Trademark, opposition, trademarks | Permalink
Posted by Dr Michael Factor

What is required to obtain actual and not estimated costs in a Patent Opposition?

November 20, 2011

Oval Magofim LTD, represented by Mati Barzam, successfully opposed Israel patent application No. 165760 to Alberto Lodolo.

After requesting and receiving one extension to file a response and counter-claims, the applicant filed for a second extension and was refused, and the application was thus dismissed.

The opposer filed for costs, and claimed NIS 50,000, arguing that the legal costs incurred were NIS 35,763.60, to which should be added a further NIS 15,000 for direct costs to the opposer who had to use their own staff to prepare evidence for the Statement of Case.

The lawyer’s invoices were appended to the request for costs, as was an affidavit from the CEO of the opposer who claimed that he or another worker had spent 100 hours in getting material together and in reviewing the opposition statement.

In ruling, Ms Y. Shoshani Caspi considered lawyer’s invoices labeled ‘for patent work’ insufficiently detailed to be clearly linked to this specific case and to explain how the sums reached were justified. Furthermore, the affidavit was also considered insufficiently detailed. One specific point Ms Y. Shoshani Caspi queried was that the CEO detailed reviewing the statement of case. Ms Y. Shoshani Caspi considered this as an additional safeguard but not strictly neccessary. She rejected the actual costs and estimated that NIS 15,000 were appropriate for the amount of work performed.

Costs in opposition to IL 165760 to Alberto Lodolo, opposed by Oval Magofim LTD., 19 September 2011.

COMMENT

Without seeing how much material was filed, it is difficult to estimate how much work went into it, but at a reasonable  IP lawyer’s rate of NIS 1000 an hour, one can assume that the cost of filing an opposition, which requires analyzing the application, reviewing prior art and writing an opposition will take time.

I suspect that the patent office simply weighs the material submitted, and am not sure that the estimated costs are fairer than the requested costs.  That said, the patent office is in the best position to directly compare different cases.

 

Leave a Comment » | Intellectual Property, Israel, Israel IP, Israel Patent, Israel Patent Office, Israel Patent Office Rulings, opposition | Permalink
Posted by Dr Michael Factor

How many lawyers does it take to cross examine a witness?

November 20, 2011

This isn’t a joke. Rafa Laboratories LTD. opposed patent number 129724 to Takeda Chemical Industries.

The then Deputy Commissioner allowed the applicant to cross-examine someone in Slovenia at the opposer’s expense.

The applicant, represented by S. T. Colb, presented the opposer with an itemized bill for NIS 76,449.70, for first class flights for two attorneys from Israel, Takeda’s Head of IP from the UK, and a further representative from Japan. In addition to the four first class tickets, the applicant incurred three night’s stay in Ljubljana and hired the services of a local lawyer.

The opposer thought that three representatives was quite adequate, and that they could fly tourist class. They considered both the Japanese representative and the local lawyer to be unnecessary, also the first night in Ljubljana, which was a full day before the evidence taking, to be excessive. They redid the maths assuming that business class travel was twice as expensive as tourist class, and paid NIS 25,398.41.

In response, Colb argued that the lawyers always travels first class and the first day was required to hold a meeting between the various lawyers, and doing this in Ljubljana was the cheapest option.

The present decision examines the claims of both sides and rules on what are reasonable costs.

The Decision

Ms Yaara Caspi Shoshani considers it the prerogative of the applicant to decide how many lawyers to send and whether the best person is to come from Japan or elsewhere, so found four representatives acceptable. Furthermore, she had no problem with the applicant engaging a local attorney as the examination had to be performed in accordance with local civil procedure. However, regardless of whether the attorneys in question generally travel business or tourist class, she did not see why the opposer should pay for the luxury of business class. As to the first night in the hotel, she accepted that meeting in Ljubljana was cost-effective for the applicant but did not see why the opposer should pay for the expenses incurred by the applicant in preliminary meetings.

She halved the fee asked for on behalf of the Japanese representative, added a taxi fare and a night in Paris for him (no direct flights), converted everything into New Israel Shekels at the exchange rate at the time of the hearing and came to the conclusion that a further NIS 29,935.35 was in order.

The main case-law she based her reasoning on, was Bagatz 891/05 Tnuva vs. Israel Department of trade and Industry,  P. D.  S(1) 600.

The Ruling: Costs re Takeda Chemical Industries vs. Rafa Laboratories Concerning Israel Patent No. 129724, 20 September 2011.

Comments

IL 129724 relates to crystaline structures of Indazole.

I would recomend any attorney having reason to go to Ljubliana to visit Bled. It’s stunningly beautiful and seems a pefect backdrop for a business picnic. I can understand why Rafa feel bled by this, but quite frankly the sums of money to be made if a commercially significant pharmaceutical patent is successfully opposed are very significant.

Unfortunately, when I went with wife and kids for a week’s self catering holiday in Slovenia, we went tourist class and I couldn’t write it off as a business expense. Still it’s nice to know that one day I may need to go there on IP related business.

Leave a Comment » | Israel Patent Office Rulings, pharmaceuticals and Biotechnology, Israel IP, IPO, Israel Patent Office, pharmaceuticals, drugs, Israel, Intellectual Property, opposition | Permalink
Posted by Dr Michael Factor

November 20, 2011

Adv. Doron Neuman represents Toolbox Design. Their trademark application number 224994 was refused, and the applicant requested and was granted a hearing. the day before the hearing, it was noted that he had not paid the request fee and the staff of the patent office made efforts to reach him, apparently beyond that required of them. On the day of the hearing itself, the Patent Office managed to make contact with the legal representative who informed them that his client had decided to forfeit his right to the hearing. In view of the costs incurred in preparation, costs of NIS 800 were awarded to the State for wasting judgement time, unproductively used due to applicant’s behavior.

The Case: TM 224994 to Toolbox design, 7 November 2011, by Adjudicator Ms Y. S Caspi

Leave a Comment » | IPO, Israel, Israel Related, Israel Trademark, trademarks | Permalink
Posted by Dr Michael Factor

A slew of interim judgements and other minor rulings

November 20, 2011

There have been a slew of minor judgements recently published by the Israel Patent Office. None are big headline decisions, but to the extent that the Israel Patent Office is consistent, they do indicate what is likely to happen in analogous circumstances, which is probably why they are published in the first place.

Currently, Ms Yaara Shoshani Caspi is the only adjudicator at the Israel Patent Office who is issuing rulings, so understanding how she sees things, is of value for those engaged in contentious proceedings before her.

Finally, as this blog tries to be comprehensive concerning Israel IP developments, it seems that these should be covered like everything else.

The following articles are thus interim decisions reported in the interim, until something substantive happens.

Leave a Comment » | Israel IP, Israel Patent Office, Israel Patent Office Rulings, Uncategorized | Permalink
Posted by Dr Michael Factor

Illusionist fined for plagiarising trick

November 18, 2011

According to an Associated Press report, Hans Klok, a magician, was successfully sued by a former assistant, Magician Rafael van Herck, and fined €12,205 ($16,725) by a Dutch court for performing a routine in which he fights with a stubborn butler, first apparently reaching through his body to grab a glass of water off a tray, then smacking off his head momentarily.

Klok argued that the tricks are known, and had been performed by Siegfried & Roy in Las Vegas. But the court ruled Van Herck’s combination is unique.

COMMENT

Apparently the grounds for the payment was copyright infringement.

Although a magician myself, I haven’t been following the international magic scene for some years now and don’t know either performer.

I find the case interesting as back when I was running the patent department of Seligsohn et Gabrieli, one of Israel’s oldest IP firms, I published a serious of articles in a monthly magic magazine, Club 71, now rebranded as the Magician, on how the various types of intellectual property; patents, designs, trademarks, trade-secrets and copyright, impact on the conjuring world.

Arnan Gabrieli, the head of the firm and a leading Israel litigator wasn’t sure that there was copyright in a magic routine. My position was that a magic routine (not the “how” but the “what”) was a dramatical performance and thus copyright protected. It seems from this case, that I was right.

Magicians have a funny internal code of ethics. Most magic shops won’t accept the return of a trick found to be unsuitable by the purchaser as they consider the purchaser now knows the secret. However, the secret is rarely a secret in any real sense, as it is generally published in books and magazines, some of which may be in public libraries or sold via regular bookshops. The secret was not the magic stores to sell.

I perform for family and friends, hospitals and charities, but have stopped attending magic society meetings, since I find the field stiflingly boring and magicians amongst the least creative people I come across. The dress codes and routines are all so retro. Very little seems to have changed since Hoffman.

That’s not to say that all people coming into the office for advice regarding their inventions have actually created something new.

Having mentioned Club 71, I note that the magic shop that put out the magazine, Repro, had a much fairer policy and would refund money for mistaken purchases, but not for used flash paper.

Magicians have been in the courts before. Ironically, a 12,000 Euro fine for a case that gets picked up by the associated press is good value for money.  It’s the sort of thing that both magicians could have collaborated on to get the publicity. Now there’s a thought.

Leave a Comment » | Copyright, infringement, Magic, passing off | Permalink
Posted by Dr Michael Factor

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