The IPKAT has clocked up its 10,000,000 hit today.
Congratulations to Professor Jeremy Phillips, to veteran Israel trademark attorney Neil Wilcoff and to the other Kats on this tremendous achievement.
Rafael Advanced Weapons Systems LTD filed two patent applications, IL 149934 and IL 180478 “Airborne Reconnaissance System”, which were opposed by Elbit Electrooptical ELOP LTD.
IL 149934 was filed on 30 May 2002, and on allowance, published for opposition purposes in May 2007. Elbit filed an opposition, as did Elta – Israel Aircraft Industries.
Because of a divisional application, IL 180478, the opposition was frozen until the second case was allowed and published for opposition purposes on in November 2009. Both opposers opposed both applications. Since the cases were identical, the oppositions were combined. The two cases were heard together, although they weren’t combined in a single proceeding.
When the oppositions were eventually dropped, the applicant applied for 711,263.79 Shekels in costs, providing an itemized table of charges for each action.
After reviewing the table and noting a mistake wherein 54,330.25 Shekels was listed instead of 543.3 Shekels, the opposer suggested that a total of 25,000 Shekels would be more appropriate.
In her ruling, the deputy commissioner ruled that for freezing the first opposition until the divisional application published, no costs were appropriate. On the other hand, she considered the full 24,180.73 Shekels charged for the second period, after the divisional application was allowed as being fairly charged.
She also allowed 100,470.58 Shekels for filing corrected statements of case, 150,000 Shekels as reasonable for the submission of evidence and 7000 Shekels for the charges for requesting costs. The total costs allowed were thus 281,651 Shekels, to be paid within 30 days, or interest would be accrued.
It is well established that opposers have three months to file trademark oppositions. Once this deadline has passed, the correct procedure is to file a cancellation request. There are not many differences between the two proceedings, but the onus changes to an assumption of validity.
Marco Pietroni filed a Madrid Protocol trademark application that specified Israel as one of the countries covered. The mark, 251203 is for the word “Stoneglass” and was filed in classes 19 and 21 for Glass element for building, glass slabs for use in building, plate glass for building, sheet glass for use in building, glass panels, glass tiles (not for roofing), glass for building, and in class 21 for sheet glass (except glass used in building), sheet glazing materials (other than for use in building), glass panels (semi-finished article).
The mark was allowed on 7 November 2014, and a notice was sent to the WIPO that unless an opposition was filed by 28 February 2014, the mark would issue.
An opposition was filed on 2 March 2014 under Section 56 of the trademark ordinance, and a copy, in Hebrew was sent to the International Registry that day.
Since no response was received, the mark was considered cancelled.
I examined the register.
The record is as follows:
Under regulation 37 of the trademark regulations, since more than two months had passed and the trademark owner had not responded to the opposition, the mark was considered abandoned.
In other words, an opposition procedure was initiated despite three months having passed, and on applicant failing to respond, the cancellation procedure was canceled and the mark was registered as abandoned.
In my opinion, this is a miscarriage of justice. For whatever reason, the opposition was filed too late. It should have been ignored. Since it was too late, there is no reason why the applicant (who does not have local representation) should have responded.
Regulation 37 follows regulation 35. The requirement to respond to an opposition presupposes that the opposition was timely filed.
In the Suprene case, the Deputy Commissioner Ms Jacqueline Bracha ruled that she does not have authority to extend the three month drop deadline for filing oppositions and that if the deadline is missed, a cancellation proceeding is in order.
One wonders why the Adjudicator Ms Shoshani Caspi considers that she does have this authority?
We cannot even tell if the International register informed the applicant of the late filed opposition. Generally late submitted documents are not considered.
Three parties: CNRS, University of Pierre and Marie Curie, and the Centre Etudes et de Valorisation des Algues, Ceva filed a national phase of FR2011/051384 into Israel as IL 224677.
On three separate occasions, the Centre Etudes et de Valorisation des Algues, Ceva indicated a lack of interest in the European and Israeli applications being examined. In the circumstances, the other two parties applied to continue prosecuting under Section 25, with their request supported by a statement from Ludovic Hamon the VP of CNRS.
In cases of multiple owners, Section 25 allows for a jointly owned patent application to be prosecuted in accordance with the desires of only some of the parties, but the Commissioner will only abandon an application or patent at the request of all of the parties.
Section 25 has not been clarified by the case law, and the accompanying explanation to the Law from prior to its legislation, does not relate to this section.
The Deputy Commissioner suggests that the purpose of the Law is so that a pending application may be moved forwards without agreement of all parties, so long as they are all kept in the picture.
In this case, despite the disagreement on ownership, two of the applicants are willing to the prosecution of the application without the involvement of the third party.
Since the Commissioner cannot see how the third party can lose from this, she ruled that examination should continue, with the third party being informed of developments.
Whereas all applicants may submit for an application to be abandoned, there is apparently no mechanism for one applicant of many to disengage himself from the examination process. Consequently, the Deputy Commissioner suggests that she should act as per the Law of Chattels. However, without clear indication from the third party that they are relinquishing all rights in the application she is unwilling to do more than simply to follow advice of the other parties.
Ruling, Jacqueline Bracha, 30 June 2014
This type of case could get very messy. Any of the joint owners can license the patent if allowed. Where parties are jointly owned, one should try to have clear contractual obligations in place. In this sort of case, ideally the interested parties should try to buy out the rights of the disinterested party.
This is a report of the book launch of Dr Shlomit Yanisky-Ravid’s opus “Intellectual Property at the Workplace: Theoretical and Comparative Perspectives, by Dr Shlomit Yanitzky-Ravid”. קניין רוחני בעסודה: תיאוריה, מעשה ומשפט השווה – ד”ר שולמית יניצקי-רביד. I have a peer-reviewed book review waiting publication, and can only blog that once it has publishes, at least on-line, so this article focuses on the event, not the book.
Dr Miriam Biton once accused me of only blogging about refreshments at conferences. This is not true. I try to cover events for IP enthusiasts who forgot to attend, and do try to cover the less substantive aspects of events as well. Nevertheless, I had worked through lunch and the reception started at 4:30, so I was grateful that it included savoury sandwiches. They weren’t very exciting or tasty, but were filling, and I didn’t get home until gone 10 PM, so it was appreciated. Most were short on filling, but one with avocado wasn’t, and I had changed into a white shirt for the occasion. Ah well.
There were perhaps 30 people at the reception, and about 100 at the event. This number included students. In an email exchange with me Dr Shlomit Yanisky-Ravid claimed 80 registered participants, so perhaps we should accept this figure without quibbling.
WORDS OF WELCOME
The evening opened with words of welcome from the Dean of the Law faculty, Professor Amichai Cohen, who noted how active Dr Shlomit Yanisky-Ravid is very busy in a wide range of activities including organizing events, student trips abroad, lecturing, publishing, directing the Center for Comparative Law and other work for the ONO Academic College.
For some reason, the compere, Dr Rivi Cohen, who otherwise did a fine job, introduced the Commissioner of Patents and Trademarks, as Adv. Assa Kling. I suppose a law academic considers that being an attorney-at-law is a major achievement, but there are 50,000 of them in Israel, and only one Commissioner of Patents at a time. The job description of Commissioner of Patents is approximately on a par with being a District Court Judge. As the commissioner had recently published a ruling relating to Service Inventions that had related extensively to the book, but ruled that even the author admitted that the current state of the Law was not in accordance with her views, I was eager to hear what he had to say. Diplomatically, he spoke about the collaboration between the Patent Office and WIPO that Shlomit was involved with, and didn’t relate much to the book other than noting that it was in the Patent Office library. He also noted that there was an unprecedented 8 cases before the committee for employee compensation, so the book was timely and important.
Judge Elisheva Barak Ussoskin, the Emeritus Labour Court Deputy President, read a speech that fairly summed up the book. She then apologized for not staying, but her grandchildren had ballet, which she felt was more important. For a words of praise presentation, this was pardonable, but subsequent speakers in the first panel, made up of academics and colleagues of Shlomit from ONO, also spoke and then walked out.
THE ACADEMIC PANEL
Former Accountant General, Professor Yaron Zlikha, raised some interested points concerning non-patentable inventions by civil servants, and argued that giving a large percentage royalty to civil servants who were inventors of patents discriminated against their colleagues who may have made lucrative innovations for the government that are not patentable. He gave, as an example, an action he had initiated that had generated two billion shekels for the communal pot, arguing that giving inventors 35% royalties and not giving him even 3.5 parts per million, seemed a little unfair. Professor Shlomo Noy, Head of the Health Services Department at ONO then spoke. He countered some of Dr Zlikha’s comments. Both senior ONO lecturers spoke and walked out. Not taking questions from the floor is one thing, but not staying for the break to take questions individually, or to hear other panelists comments, seemed to me to be bad manners. If the moderator had forced them to react to each other’s comments, a meaningful debate might have ensued. (I felt that the moderator, who mentioned Shlomit’s important chapter on gender, was mostly qualified by virtue of being a female academic).
Professor Orly Lovel gave a perspective based on corporate law. She had a lot to say and limited time, so gabbled somewhat. Her last point was valid, though hardly original. She noted that the labour Laws in California which allowed workers to change companies and take knowledge with them had generated Silicon Valley, whereas the Massachusetts State Law had prevented a similar phenomenon from growing up around Boston, despite the top universities there. I Accept that this is good evidence that pro-worker legislation is good for the technological progress. However, I am not sure that it is good for companies or inventors. In other words, the question of how this redistributes wealth was not addressed.
THE PROFESSIONAL PANEL
After the break, there was a panel chaired by Advocate and Notary Calia Klein, the head of the labour law group at Pearl Cohen. Having experienced first hand of how her firm treats employees, it was interesting to discover that they have an Employment Law group, and are thus presumably aware that there are laws in this area. There were some solid but not particularly inspiring comments by Adv. Yossi Markovitch and by Adv. David Gilat. David noted that the employer-employee relationship is part of Patent Law, not Labour Law and felt that this was appropriate.
Adv. Eran Bareket made some interesting and, for me, thought provoking comments about forum shopping regarding service inventions, noting that the book hadn’t related to this issue. He pointed out that one can file suit in the labour courts, the District Court, with the Commissioner of Patents in opposing a patent as being the true inventor or owner, or with the committee for compensation for service inventions. He gave examples of where cases had gone to each forum and considered the state of affairs problematic, as the rulings would perhaps be influenced more by the forum, than by the issues.
Mr Amir Raveh, an inventor and investor in start-ups acknowledged no legal training and feigned not to have understood the terminology used by the other panelists. He stated that whereas a few years ago,start-ups were expected to have patent applications, nowadays, this is no longer the case and the issue when selling companies is human resources. He did not seem able to explain how one can sell human resources though. Employees can move companies, and non-compete clauses are rarely enforceable. He seemed to be involved in the currently trendy smartphone App field. I wonder how one can prevent competitors from under-cutting without patents?
The evening concluded with Dr Yanisky-Ravid thanking just about everyone, receiving a bouquet of flowers from a student groupie, and lots of photos of her posing with speakers and family members who had turned up in force to show their support.
Yesterday I attended a meeting of the Association of Israel Patent Attorneys in ZOA House, Tel Aviv. The invitation and program were blogged here.
The topic under discussion was Secondary Use Claims. Unfortunately, I arrived late and missed the first talk by Adv. Yair Ziv, but caught most of Adv. David Gilat’s presentation, that of Dr Ron Tomer, and that of Ena Pugatsch.
The event was well-organized and well attended. From the remains of the refreshments by the time I arrived, they seemed the usual ZOA fayre. Kudos to the committee headed by Ex-Commissioner Dr Noam, for organizing the event. There were 85 participants in the meeting. This is impressive for a highly specialized topic at an event open to a small organization (noting with approval however, that there were both lawyers and in-house patent coordinators present that are not patent attorneys and thus not members, and also trainees).
Adv. David Gilat posited that drug patents were necessary to compensate the drug developers for their investment, and that secondary uses were also the result of research. Dr Ron Tomer (confusingly called Dr Yaron Tomer in the original invitation to the event) expertly and clearly countered all of Davidi’s positions, and demonstrated that the pharma industry were creatively filing secondary uses that lacked inventive step and were obvious. He gave various examples. Firstly, he referred to sildenafil citrate, originally developed for treating angina and now used almost exclusively as a treatment for erectile disfunction, as a hard problem. (I thought it was a flaccid problem and a hard solution, but I digress). He went on to argue that an oncological drug for one type of cancer may fairly obviously be tried for another type of cancer since the underlying effects of the drug would treat both mutant cells the same way. He noted that patents were not awarded for research but for inventions. He claimed that there was nothing new in the drug, despite the new use. He gave convincing examples of ever-greening, and also argued that if it is surprisingly found that a drug treatment for gastro-reflux also kills bacteria in the stomach, then the patient using it takes the same drug for the same purpose that he took it for originally. Since the drug is public domain he could take the generic drug, but to kill the bacteria, he’d have to take the patented drug for a couple of weeks and then move back to the generic. similarly, someone taking a generic statin for cholesterol, on being diagnosed as having genetic cholesterol, would have to switch to the patented version offering protection for this ‘secondary use.’ The talk was intelligent and entertaining, and it was a valuable demonstration of the ubsurd results of secondary use patents.
Ena Pugatsch gave an example of a secondary use claim for a mechanical device that issued in Israel and was upheld by the courts. The device in question was a blackboard that could be used as a screen for showing projected images, where the device and method of manufacture were known but the secondary use wasn’t, and the court upheld the patent. Comparing to European case-law and to US law, she felt that the ruling was ‘problematic’ (a nice way of saying that she considered that the court had got it wrong).
When the floor was opened for questions Mr Zebulun Tomer (Ron’s father and the director of Unipharm) took the opportunity, as he has done on other occasions, to give a little impassioned speech, rather than a question. He made some noises about the results of lobbying and argued that Section 7 prohibits therapeutic treatment of the person and that no-one can convince him that a secondary use is anything other than a method of treatment of the person. Instead of merely pointing out that the issue wasn’t convincing him, but of convincing neutral judge, Adv. David Gilat agreed with him, but said that this was precisely what the Use Claim (Swiss type claims) were for – that is, to allow patents for pharmaceutical methods of treatment despite the prohibition for patents for methods of therapeutic treatment, and this was because of the costs incurred in research and development.
David Gilat spoke well as would be expected from an experienced litigator. Dr Tomer’s response was also very clear and well constructed. Ena Pugatsch is not an orator, nor is Hebrew her first language (or, I expect, her second language). Nevertheless, her talk, though not the most fluent, was the most thought provoking. All three speakers had far too much content per slide, but none are lecturers. Designing good slides is an art.
David and Ron each presented their opposing positions. As Gilat Bareket represents drug development companies and the Tomer family own Unipharm which manufactures generic drugs, their views were hardly unexpected. I suspect that those in the audience actively involved in prosecuting or litigating pharmaceuticals have equally strong positions based on their source of income. (Richard Luthi, another leading litigator who represents pharma, once told me that under the former Commissioner Dr Noam, the pharmaceutical development industry didn’t have a chance. Whether Dr Naom was biased, whether Unipharm had better arguments, or whether Adi Levit is simply a better litigator, is open to discussion).
The percentage of my income coming from work on pharmaceutical patents is very small. I’ve been involved with both local and foreign clients on both sides of the fence. I tend to find the generic companies’ arguments more persuasive, but can’t tell if this is an inherent bias or whether their arguments are actually better. It is also possible that drugs that are opposed or challenged in cancellation procedures are ones that generally should not have issued, and the both the drug development industries and their litigators have an uphill battle. What is clear, is that Unipharm have had some impressive victories in recent years against Mercke, Smithkline Glaxco, Lunbeck, etc.
Ena’s talk got me thinking. I believe that the original Section 7 law against methods of therapeutic treatment is a historic artefact designed to protect doctors from being sued and represents a moral position that despite obvious utility, novelty and inventive-step, such subject matter would not be patentable. It is a remnant from a period predating the modern pharmaceutical industry. David is correct however. Without effective patent protection, drug development companies would not invest the significant sums required to research and bring a new drug to market. The long approval period also justifies patent term extensions. This development is indeed the result of lobbying, but is, nevertheless, justified. What may not have been justified, is to apply the extensions on cases that were already filed, granting the pharma industry a massive handout that perhaps resulted in them NOT investing in developing new drugs.
Drug developing companies can fairly be accused of ever-greening, and their tactics in filing for secondary uses are commercially driven. However, despite the Special 301 Reports, the generic drug industry are not Robin Hood like outlaws. It is there right to challenge the validity of patents, and some applications are allowed that shouldn’t be. Nevertheless, I suspect that sometimes oppositions are filed for commercial rather than solid legal reasons.
The Swiss Claim (use claim) format is a legal work-around the method of therapeutic treatment clause. Use claims are acceptable in European and Israeli law and are essentially method claims. They do not exist in the US, however in the US one can file methods for therapeutic treatment. What one cannot do, is enforce them against the doctor or surgeon.
After TRIPS, it is clear that one cannot exclude drugs from patent protection. One can still have a principle against patenting methods of treatment. However, countries have to allow patent protection for drugs.
As David Gilat reminded us, patent term extensions were indeed allowed as a package with and justified by a bone thrown to the generic industry – the so-called TEVA amendment, allowing the generic companies to experiment and obtain marketing approval, but not to stock-pile generic patents prior to the patent terminating. However, one right does not balance the other. Mr Zebulun Tomer is correct that the current balance is the result of lobbying. There were lobbyists on both sides. The ‘one size fits all’ patent law does fail for pharmaceutical patents if such patents have, in the past, been allowed after the 20 year expiry date.
As to second use, the first thing to understand is that use claims are method claims and should be treated as such. The Rav Bareakh crook-lock ruling by the Israel Supreme Court allows contributory infringement and inducement to infringe. However, in Srori vs. Regba, the fact that a sink could be mounted flush with the work surface was insufficient grounds to grant an injunction against the importer, since, As Adi Levit argued effectively, the sinks in question could be mounted under the work-surface, or could be mounted with the lip overlapping the work surface (over-mounted) or could be filled with earth and used as a flower-pot. Thus, the proper infringers were the kitchen installation companies, and there was no effective bottle neck to sue in the supply chain. Getting back to secondary uses for drugs, lets assume that using aspirin to dilute blood to prevent thrombosis is indeed novel and inventive. This does not prevent patients buying aspirin over the counter for treating aches and pains and then using it for the new patented use. Manufacturers of aspirin are not infringing the secondary use patent. Similarly, generally speaking, patents for secondary uses are not for the drug itself, but for its use in treating a particular illness. They are method claims. I agree with Dr Ron Tomer that the manufacturer is generally not the infringing party. The physician or patient might be, that the US exception against suing health care officials should apply. There are, of course, some particular dosages that are borderline cases. In such cases, the newly packaged drug is a new product. Whether or not, it is also inventive, is arguable.
Referring back to the blackboard; Ena is correct, it was not a new product, nor was its method of manufacture new. The novelty lay in the method of use, i.e. for projecting an image thereonto. The patent provided grounds for suing schools and teachers for direct infringing – both customers of the patentee and of competitors. This is a patent without teeth. If competing manufacturers note that their blackboards may also serve as a screen, is this inducement to infringe? Maybe it would be better for them to note that although the blackboards may be used as screens, this use is protected by Israel Patent Number IL XXXX, and as long as the patent is valid, is not allowed. This is very different from the crook-lock case where the imported part was designed and manufactured for combining with two common elements to provide the crook-lock, and could only be used for infringing the patent, or for a trivial use such as a paper-weight or land fill.
At the end of the day, it is the job of the patent attorney to draft patentable and enforceable claims. I note that in the US, the pendulum has recently swung away from secondary infringement. See US Supreme Court Ruling 12–786 Limelight Networks v Akamai Technologies Inc et al., June 2, 2014. I believe that often these cases result from poor claim drafting, as do Marksman disagreements. In the past, I drafted and successfully prosecuted a patent for a kitchen sink AFTER Tsrori vs. Negba. See US6782593B1. I’ve also had fun drafting together with Adv. and Patent Attorney Tami Winitz a patent for a new method of using an existing heart valve, where I believe the creative claim-set provides enforceability. See US8408214B2. Patent attorneys drafting applications try to protect their client’s inventions and stretch the law. Litigators opposing patents do the opposite. We all have our roles to play.
This ruling by the Commissioner of Patents clarifies what types of amendments to claims may be allowed during oppositions and post grant, and in which cases the patentee has to provide justification for amendment. Unfortunately, in applying the rules, the commissioner got it wrong and allowed an amendment that causes embodiments not previously within the scope of protection to henceforth be protected.
Rafael Advanced Warfare Systems LTD opposed an attempt to amend the description of patent application no. IL 188066 titled “System and Method for Identifying Shooting”, which was filed in December 2007 by Optigo LTD and Elta Systems LTD, transferred totally to Elta in December 2011, and published for oppositions at the end of July 2012.
On 25 October 2012 Rafael filed an opposition, submitting a statement of case in February 2013. Instead of responding, in August 2013, Elta applied to amend the application. Rafael opposed this as well, filing a further statement of case, and in January 2014, Elta filed their statement of case. Under Regulation 102, the main opposition is suspended until the allowability of the amendment is determined. The parties forwent the right to a hearing and the ruling on the amendment was given based on the written submissions.
In brief, the application claims identifying shooting from the Infra Red flash from gun muzzles.
The amendments included:
The marked up amended claims are reproduced below:
1. 2. A method for use in detecting and locating on of a muzzle flash event, the method comprising sensing electromagnetic radiation by an imager comprising a non cryogenically cooled Photo Detector Array (PDA) sensitive in at least a portion of the NIR and SWIR spectrum, thereby imaging the sensed electromagnetic radiation, wherein said electromagnetic radiation propagating towards the PDA undergoes filtering for selectively passing towards the PDA the electromagnetic radiation of one or more spectral ranges of relatively low transmission in atmosphere –of said at least portion of the NIR and SWIR spectrum, said sensing imaging having an integration time shorter than 10-2 s.
2. 1. A method for use in detection detecting and locating of a muzzle flash event, , the method comprising sensing electromagnetic radiation by an imager comprising a non cryogenically cooled Photo Detector Array (PDA) sensitive in at least a portion of the NIR and SWIR spectrum, thereby imaging the sensed electromagnetic radiation, wherein said electromagnetic radiation propagating towards the PDA undergoes filtering for selectively passing towards the PDA the electromagnetic radiation of one or more spectral ranges of relatively low transmission in atmosphere for said at least portion of the NIR and SWIR spectrum; and wherein said sensing imaging having an integration time shorter than a duration of the muzzle flash event; the method comprising applying staged processing to pixel signals of said PDA for consecutively reestimating the occurrence of said muzzle flash event while reducing the amount of data to be processed at each stage, and wherein said staged processing comprises a stage of parallel in-pixel processing.
3. The method of any one of preceding Claims 2, wherein said parallel in-pixel processing comprising analyzing the time dependent signals from each pixel independently of other pixelssensing is at least in part performed within the NIR spectrum.
4. The method of any one of preceding Claims, wherein said imager comprises at least 10,000 pixelssensing is at least in part performed within the SWIR spectrum.
24. A device for use in detection and location of a muzzle flash event, the device comprising an imager comprising a non cryogenically cooled Photo Detector Array (PDA), sensitive in at least a portion of the NIR and SWIR spectrum, and a filter of electromagnetic radiation configured and operable for selectively passing therethrough spectral bands corresponding to relatively low transmission of the electromagnetic radiation in atmosphere for said at least a portion of the NIR and SWIR spectrum, said sensing PDA having an integration time shorter than 10-2 s.
25. A device for use in detection and location of a muzzle flash event, the device comprising an imager comprising a non cryogenically cooled Photo Detector Array (PDA), sensitive in at least a portion of the NIR and SWIR spectrum, and a filter of electromagnetic radiation configured and operable for selectively passing therethrough spectral bands corresponding to relatively low transmission of the electromagnetic radiation in atmosphere for said at least a portion of the NIR and SWIR spectrum, the PDA having an integration time shorter than a duration of the muzzle flash event; the device includes a processing system adapted for applying staged processing to pixel signals of said PDA for consecutively reestimating the occurrence of said muzzle flash event while reducing the amount of data to be processed at each stage, and wherein said staged processing comprises a stage of parallel in-pixel processing.
26. The device of Claim 2526 or 27, wherein said parallel in-pixel processing comprising analyzing the time dependent signal from each pixel independently of other pixels the PDA at least partially being sensitive within the NIR spectrum.
27. The device of any one of Claims 26 24 to 2826, the PDA at least partially being sensitive within the SWIR spectrumwherein said imager comprises at least 10,000 pixels.
Following these amendments, applicant requested replacing sensing with imaging in claims 15, 16, 17, 20, 21, 22 and 23, and deleting the words sensing being in claims 43-36 with appropriate grammatical amendments.
In claims 5-11, 18-19, 28-34, 38-42 the applicant requested adding the word wherein with appropriate grammatical amendments.
Applicant requested cancelling claims 5, 19, 30 and 44.
Claims of the parties
Elta claimed that the amendments were supported by the specification and that none of the amendments widened the scope of protection and thus fulfilled both Sections 65 and 66 of the Law.
Rafael countered that the amendments widen the claim-set, change the essence of the invention and claim elements not is the original application.
Rafael argued that “detecting and locating” is wider than merely detecting in that the invention now enables working out where the flash comes from. Therefore the amendment should not be allowed. Similarly, imaging includes sensing, but provides additional functionality and enables obtaining results not previously protected. Substituting SWIR for NIR enables using a sensor that does not work in the NIR part of the spectrum. Furthermore, the proposed amendments to claims 3, 4, 26 and 27 are substantial enough to effectively amount to new claims.
Elta responded that nothing claimed extends beyond the scope of the original specification. SInce the opposer did not provide evidence supporting his allegations, they should be thrown out under Regulation 102c, and the opposer should be considered as accepting the amendments.
The opposer considers that having to detect locate is narrower than merely detecting and should be allowed.slocating is supported on page 13 lines 17-21, page 53 lines 20-22. Similarly, “an imager comprising a non-cryogenically cooled PDA” is narrower than merely a PDA, since it has to be an imager. Support is found on Page 10 line 6, page 7 lines 20-23 and 28-29. In general, the very sensing is wider than imaging, as imaging requires sensing, but also forming a picture. In general, adding additional stages to a process is inherently narrowing. Thus any amendments that narrow the scope of protection should be allowed.
This ruling was issued by the Commissioner, Asa Kling.
Opposers are not required to submit evidence where the issue revolves around an internal logic. The mere failure to submit additional evidence cannot be taken as abandoning the opposition. The proposed reading of the regulations was thus rejected.
Citing Section 29 of the Latent Law, post acceptance, the allowable amendments to claims are those allowable post-grant. i.e. amendments allowable under Sections 65 and 66.Such amendments have to be supported by specification and cannot be a widening in the scope of the protection requested. In addition, Regulation 95a allows post allowance amendments only on paying the requisite fee and stating the purpose of the amendment (so that the commissioner can ascertain that the amendment is indeed a narrowing of the scope of protection).
Citing then deputy commissioner Axelrod in IL 101537 Unipharm vs Merck, 30/4/2003 Section 21b, the applicant has to provide explanations to persuade the examiner that the amendments should be allowed. This was upheld by the Supreme Court in 11194/04 Polyvid polystyrene foam vs. Eli Givati et al. Essentially, according to the Commissioner, he has no choice but to allow amendments that correct a mistake in the claims and claim that which should have been claimed originally, if doing so does not widen the protection, but the onus is on applicant to show that this is indeed the case. The question is really whether after the amendment, the claims can catch something that would otherwise not be considered infringing.
As to locating, since detecting and locating is narrower than merely detecting, it was allowed. Similarly, a choice of a specific type of imager is narrower than any detector and was allowed.
The Commissioner considered SWIR as relating to the range 0.7 microns to 1 microns and NIR as relating to the range 1 micron to 3 microns. Since the range is smaller, he allowed this amendment. (I believe that this amendment is wrong as I will explain below).
As to claims 2 and 25, these also narrow the claim scope, but their intent was not stated and is not self-evident. Consequently, these amendments were rejected, as were the corresponding amendments to dependent claims 3 and 26. Claims 4 and 27 that replaced wavelengths with pixel densities were considered new claims and were rejected.
Any amendment not obviously narrowing, was not allowed, since the onus was on applicant to explain why additional or seriously amended claims should be allowed.
Adding words like ‘wherein’ and correcting grammatical errors was allowed.
In conclusion, the amendments to claims 1, 5-24, and 28-52 were allowed, as was deleting original claims 5, 19, 30 and 44. The new clauses in claims 2 and 25 for ‘the method comprising’ and ‘the device includes’ were rejected. The amendments to claims 3, 4, 26 ans 27 were likewise rejected.
Costs were to be awarded at the end of the main opposition
I am not familiar with the term SWIR. Wikipedia considers SWIR as being below 1.4 micron and NIR as being from 1-3 microns. see here.
As defined by Commissioner Kling, the SWIR range is below that of the NIR range. The amendment protects a system using a sensor of wavelengths below 1 micron, whereas prior to the amendment it would be an acceptable work-around. Clearly, this is a widening of the scope of protection. If, for example, visible light was claimed and an amendment specified green light, or part of the spectrum from red to green, this would be a claim narrowing, since the new range is totally within the older range. That is not the case, at least not according to the Commissioner’s own definition. If he sees this, I’d expect him to correct the ruling. If not, there are grounds to appeal since the Commissioner is correct legally, but wrong scientifically. For those not with me on this, try drawing Venn diagrams.
Smart & Biggar, a Canadian firm with a memorable name has a good article comparing and contrasting the rights of an employer in employee’s copyright and inventions. See here.
This is an issue that comes up around the world, and which I have reported on and organized seminars on.
As academics, including Shlomit, spend time on sabbatical and as visiting professors (currently she is seconded from ONO to Yale), there are territorial complications. If a paper is written by a visiting professor whilst staying at a college who supports royalty free publishing, should he/she have to publish in such a journal? What about if the college where he/she is tenured prefers publication in one of their own Law Reviews?
Companies are often multinational. It is not inconceivable that a company formed and headquartered in the US State of Delaware could develop an invention by collaboration between research groups in Israel and Europe. Apart from Employment Law and Patent Law in the different countries, perhaps being different, funding from binational govt. research funds may have strings attached. Some of the research could be done by a post-graduate student in a university. One inventor may be a tenured university professor consulting to industry and another might be an industrialist who teaches a course in the university. Research could be performed in a university of industrial lab, but what if it is performed on a computer terminal in the company whilst logged on to a university computer?
Where I get drawn into these types of issues, I may be consulting to US council of the Head Office, perhaps outside-council, and could be billed by a US law firm. If the company that perhaps owns the IP has a research lab or factory in Israel, should I be charging VAT on my fees even though I am being paid by money that is laundered, conditioned and neatly pressed by the US Law Firm?
Israeli company BioLineRx has announced their receiving a Notice of Allowance for a US Patent covering a novel treatment for celiac disease. See http://online.wsj.com/article/PR-CO-20140611-903862.html for more details.