Adding Additional Material During Patent Oppositions in Israel

oppositionsIn Israel, after allowance a patent publishes for a three-month period for opposition purposes. If no opposition is filed, the patent is granted and a certificate issues.
the opposition allows third parties to submit evidence and arguments that the Examiner may have missed. Until a patent is finally granted, it cannot be enforced. there is thus a danger that opposers may change the nature of the opposition and keep supplying additional references of more or less relevance as a delaying tactic, to prevent the patent from issuing. To prevent such an occurrence, the regulations provides guidelines and deadlines for opposition procedures, and once evidence has been submitted, submitting further evidence is frowned upon. On the other hand, not allowing a killer reference to be submitted may result in an invalid patent issuing, which is also unacceptable, as this would result in the patentee being able to enforce rights he shouldn’t have.

Once a patent is granted, there is a presumption of validity. It is still possible to overcome this in the courts if the patentee sues for infringement and it is also possible for interested parties to initiate a voiding action.

IL 177724 and IL 205606 are a pair of patent applications filed by DSM IP Assets relating to reducing aggregation of cells in cell cultures. Refine Technologies LLC opposed these patent applications after they were allowed and published for publication purposes.

After filing their evidence, Refine Technologies wishes to add a further citation – US 5,871,999, arguing that the applicants had not yet responded and so doing so could not be considered a delaying tactic. They noted that a related PCT application was known to applicants, so there was little additional burden placed on them having to learn the new material. They explained that the new citation which was cited in a corresponding opposition process going on in Australia, indicated the scope and correct interpretation of the independent claim which they alleged was unclear.

DSM IP Assets opposed adding new the new material, arguing that it did not relate to issues of novelty or inventive step which were the grounds of opposition, and arguing that the request to add the material was a delaying tactic and was inequitable behaviour.

Deputy Commissioner Jaqueline Bracha dismissed arguments submitted that the request to add the material should be considered inequitable behaviour and ruled that the citation could be added at this stage. She went on to award interim costs of NIS 10,000 against the opposer.

COMMENT

The decision seems fair, but the award of costs appears to be a little steep.

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