On 4 January 2013, I reported on a strange decision by the patent office wherein Ms Jacqueline Bracha accepted an opposition filed by Colb on behalf of Aminach a mattress manufacturer, that alleged that Israel Patent Application No. 179840 for a mattress claimed to minimize cot death (Sudden Infant Death Syndrome or SIDS) should be refused due to lack of utility. My original article may be found here.
Essentially the inventors had not proven their case that the mattress provided the desired effect. Perhaps foolhardily, the inventors not only drafted their own application but also fought the opposition themselves.
On losing the opposition, the inventors appealed to the Tel Aviv District Court which ruled that on Appeal, they could review the legal conclusions of the deputy commissioner but could not hear new evidence. This ruling was appealed to the Israel Supreme Court who has now ruled that unlike regular civil procedure, in an appeal of a decision of the patent office to the courts, new evidence may be heard.
The Supreme Court ruled that Section 177 of the Israel Patent Law and Ordinance 193 of the patent regulations allow the court of Appeal hearing an appeal against a patent office decision to hear new evidence and to try the case as if it is the first court of Appeal. This should not be interpreted as meaning that the court has to hear new evidence and give the appellant a second bite at the judicial cherry. Nevertheless, the court may here new evidence where it sees fit.
In this case, Applicant had laboratory evidence that their prototype did have an effect. Instead of relating to this evidence, the District Court decided under Section 457 of the Civil Court Procedure that it could not hear new evidence that could and should have been presented to the patent office during the opposition.
In the ruling, Judge Handel noted that the inventors were unrepresented, yet nevertheless persuaded the Deputy Commissioner that their invention was novel and inventive over the prior art. They argued that they never thought it necessary to demonstrate utility. Judge Handel felt that prior to refusing the patent application on grounds of utility, the Deputy Commissioner should have actively solicited evidence from the applicant, particularly as they were not represented and were fighting against a large mattress manufacturer who was represented. he ruled that in the circumstances, the Court of Appeal should here and consider evidence that the claimed invention works. He also noted that the US, UK and EPO had all allowed the invention on its merits.
Judge Handel realized that in the absence of a conflicting expert opinion, the Deputy Commissioner had accepted the expert opinion provided by the opposers and had not been swayed by attempts by applicants to point out logical flaws in his argument.
In the circumstances, the District Court should not have been considered as rehearing evidence weighed up by the Deputy Commissioner.
The Supreme Court referred the case back to the District Court to hear fully, allowing the parties to file new evidence.
Judges Juvran and Shaham concurred. No costs were awarded.
Appeal 5041/13 Gabai vs. Aminach
(this time the Gabais were represented by Adv. Amir Friedman).
In general, patent offices do not test hypotheses. The applicant does not have to show proof that his idea works to obtain a patent except in cases such as perpetual motion machines, turning lead into gold, anti-gravity and nuclear cold fusion where there is a consensus among scientists that the idea is impossible.
At the time of the first write up I had been contacted by a lawyer to provide expert testimony. I did not want to address the issues. That fell through.
I can therefore now point out that the expert testimony provided by Aminach’s witness in no way proved that the mattress does not work. It is true that Applicants have also not proven that their mattress does have efficiency. There is, of course, a problem in that the correct scientific way to test the theory requires a large population of identical twins and putting one to sleep on a regular mattress and the other on the mattress of the invention in otherwise identical conditions. Once there have been a statistically significant number of cot deaths, one can see if the two mattresses function differently. This type of experiment, is, however, not very practical.
In the brief period I worked on this, I discovered some theories for cot death that provided theoretical support for the hypothesis that such a mattress would work, and also found a researcher who was modelling the effects of different mattresses on carbon dioxide build-up. I also spoke to polymer scientists who make foam mattresses. I am sure that it is possible to provide sufficient evidence to support the hypothesis as reasonable.
I think that having convinced the Deputy Commissioner that their claimed invention is novel and inventive, should have been awarded a patent. If it does not work, then Aminach will presumably not have a need to infringe it.
It would have been fun to fight this. I look forward to reporting that the patent has been allowed.