US Patent Law for European Patent Professionals

November 26, 2015


I was given a copy of US Patent Law for European Patent Professionals, by Audrey Nemeth to review, read it quite quickly and forgot to publish something. Now that the IPKAT has published a review, it has spurred be to get around to this myself.

The IPKAT’s review is here.

The book was written by a European patent attorney whilst preparing for the US patent agent license. It looks at US Patent Law from a European perspective.

Bibliographic data: hardback, xxviii + 215 pages. ISBN 9789041160447. Book’s web page hereAudrey Nemeth’s blogpost introducing this book on the Kluwer Patent Blog is here.

One of the most interesting points that it raised is the different histories behind the patent laws and the different basic philosophies that affect terminology, prosecution and patentable subject matter.

In Europe, for a patent claim to be valid it must describe an invention having novelty, utility and inventive step. In the US one requires novelty, utility and non-obviousness. I expect that most practitioners are aware of this, but haven’t necessarily thought about the difference in any depth.

As a result of this book showing the two systems side by side I realized that in Europe there is a basic philosophy employed by the Examiners during examination, that to deserve a patent, one needs to actively improve on the existing, by having an inventive step, whereas in the US, one is entitled to a patent for anything new under the sun made by man, unless it is obvious in light of the prior art.

Though similar, these concepts are not the same. In Europe, having dismissed the main claims as lacking novelty or inventive step, the Examiner may state that the dependent claims do not provide anything sufficiently significant to be considered as being an inventive step. In the US, however, the Examiner starts from the assumption that the invention is patentable and feels obliged to show how each and every claim is anticipated or obvious in light of prior art and established doctrine.

It is this fundamental difference in approaches which explains why the USPTO traditionally awarded the patent to the first to invent and even after the American Invents Act which further closes the gap between the two systems, will consider prior disclosure by the inventor as not necessarily preventing him from obtaining a patent.

Veteran Israel Practitioner David Gilat has said on many occasions that the Israel Patent Office’s job is to issue patents and there is an assumption of patentability that has to be overcome for an application to be refused. I was never convinced by that argument and on balance think that in this issue as in many others, Israel is closer to Europe and this is why during opposition proceedings, although the onus is on the opposer to show that the Examiner was wrong to allow the patent, nevertheless there is no assumption of validity. Putting aside the philosophical aspects, the book is helpful in understanding the procedural differences in both jurisdictions.

Audrey Nemeth suggests that it is sometimes justified having different parallel applications drafted for the US and Europe. I find this a little excessive and don’t imagine many clients would be willing to pay twice to have the same application drafted twice. I can, however see value in having licensed practitioners in both jurisdictions critiquing an application.

A personal note

I am not licensed in Europe or in the US, but for most of my clients, the US is the #1 patent jurisdiction. Funding and subject matter permitting, most clients see Europe as highly desirable for patent protection, although may largest client (in terms of patent work) only files in the US and the Far East, considering Europe too expensive for companies there to compete with him.

When I draft patents, I consider both the USPTO and EPO guidelines and am familiar with the differences in the maximum number of claims that don’t require excess claim fees, the different positions of the USPTO and EPO regarding multiple dependent claims, unity of invention, the two-part claim construction, preferred transition terms and annotations of the claims. I don’t prosecute directly in the US or EPO by generally provide very advanced draft responses so that the associate has little to do other than to review and put into his or her template. In most cases for the US, I use the associate’s template so that there is even less for the associate to do.

Despite 15 years of experience, and having drafted and prosecuted hundreds of patents, I found this book worth reading and useful reference to keep handy.


What about Japan, China and Korea?

The US and European mind-states, though not identical, reflect a Western Judeo-Christian heritage. I think that similar works covering the Korean, Japanese and Chinese patent laws would be very helpful.

I have a book in the same series that looks at IP in China. In Communist China, Intellectual Property Law preceded regular property law. I have a book on Chinese IP whose opening chapter quotes Confucius. Notably, that book has no footnotes or references to court rulings. It seems that whereas in the US and Europe, court rulings create precedent, this is not the case in China.

I know that claims that I draft are generally considered clear by European and US examiners, but often receive long lists of clarity objections in Korea.  Sometimes I can work out what the Examiner’s problem is. Sometimes I am completely flummoxed. The Examiner is, of course, looking at a translation of the English text I wrote and my copy of the Office Action is a translation of the Examiner’s comments. In this game of Chinese Whispers, I have to rely on the associate whereas in the US and Europe, we are all looking at the same English language documents.


Was the 7th Amendment to the Israel Patent Law, Concerning Drug Term Extensions Unconstitutional?

November 24, 2015




Back in 2004, following corresponding legislation in the US (Hatch Waxman Act) Israel amended their Patent Law to Provide for patent term extensions with what is known as the third amendment the Israel Patent Law. This creates a regime wherein during the period of patent protection genetic players may develop synthesis routes and seek regulatory approval for genetic versions of patented drugs, and, to ensure at least 14 years of post regulatory approval sales under a monopolistic patent regime, the basic patent may be extended by up to 5 years.

The third amendment was ambiguous and in an ex-partes ruling affecting three patents in what is now known as the Novartis ruling, Acting Commissioner Israel Axelrod understood that the amendment was designed to give a real advantage to the drug development companies and they could choose the country to base their patent term extension on.  This was not what the Knesset intended and the amendment was again amended in what is now the Seventh Amendment of the Israel Patent Law, to tidy up this and other ambiguities of the original amendment.

In 2006, under intense pressure from the US who put Israel on their special 301 Watch List of countries not properly protecting Intellectual Property, the State of Israel amended their Patent Law again.

The Seventh Amendment has retroactive effect.  The Patent Term Extension laws have, meanwhile, been amended again (Eleventh amendment to the Law). However, this ruling relates to the 7th amendment.

The Original Ruling of the Commissioner of Patents


Since the 7th amendment provides a shorter period of protection and since it is retroactive, the Association of Israel Industrialists appealed the original patent term extension concerning Israel Patent Number 110956 for Ezetrol, a drug that is used to lower cholesterol levels in blood. In consequence, the Current Commissioner of Patents, Asa Kling, shortened the previously granted patent term extension for of 1014 days to 496 days.

Merck appealed the Commissioner’s decision to the District Court on constitutional and other grounds and argued that the seventh amendment should either be interpreted narrowly so that property rights already granted by law cannot be rescinded, or that the Seventh amendment should be struck as unconstitutional.

Ezetrol is a drug that is used to lower cholesterol levels in blood. Israel Patent Number 110956 to Merck Sharp & Dohme Corp. (formally called Schering Corporation) is exclusively licensed to Merck & Co. Inc., whose daughter company in Israel has the rights to distribute the drug in Israel.

The Commissioner of Patents first ruled that the basic patent which was due to expire on 13 September 2014 would be extended and would expire on 23 June 2017. However, this period of 1014 days was subsequently shortened to 496 days and the drug will therefore expire on 22 January 2016. See here.

The extension itself issued under the then version of the Law (third amendment) on 22 September 2005. The commissioner’s revised ruling was based on a submission of 7 January 2013 from the Association of Israel Industrialists requesting  to shorten the extension period based on the seventh amendment of Section 64K from 2006.

64K states that the Commissioner may, on application by a person who is not the holder of the basic patent or of an exclusive license, cancel an extension order, if he concludes that there are grounds on which the grant of the extension order can be opposed; the Laws of prescription shall not apply to an application for cancellation under this section.

According to the Association of Israel Industrialists this shortening of the period of protection was legitimate since Section 22 of the amendment explicitly makes the amendment retroactively applicable.

Section 22(a) states that the instructions of the original Law, as phrased, will apply to extension requests and to extensions given before the amendment enters into effect, as long as the basic patent that was the basis of the patent term extension request is still in force. Section 22(b) notes that the above is true, however extension orders issued prior to the amendment would not lapse merely for failing to fulfill the requirements of Sections 5 or 6 of 64D of the main law, as detailed is Section 3 of this Law.

According to the Association of Israel Industrialists, since the basic patent had not lapsed when they petitioned the Commission on 7 January 2013, the Commissioner should apply the amended Law. The Commissioner accepted this argument and therefore shortened the patent term.

The patentee disagrees. They consider that since an extension was given on 22 September 2005, they had a property right for the extension period as ruled, and despite the seventh amendment, this right was inviolate for two reasons:

  1. Property is a basic constitutional right under the Basic Laws of 1980 and so it is appropriate to interpret new laws in a way that prevents retroactive cancellation of property. Applying the 7th Amendment retroactively would be unjust and would certainly destroy property, certainty, stability and fair expectations, where the patentee has relied in good faith on an extension that has already issued. Relying on the issued patent, Merck claims has resulted in their planning, development, pricing and marketing of the patent protected drug. Applying the transition rules in a way that provides retroactive protection should therefore only be allowed in other cases, where doing so does not adversely affect rights already granted.
  2. If the amendment cannot be interpreted in such a manner that it excludes retroactive application of the law to issued patents, then it should be cancelled as it is unreasonable and thus contrary to Section 8 of the Basic Law, Human Rights and Freedoms 1980, under which one does not abrogate property rights unless doing so is in accordance with the basic values of the State of Israel, has a correct purpose and is proportionate, or covered by a specific law. According to the patentee, there is no fitting purpose that would justify applying the Law retroactively, and such retroactive application is not proportionate.

The patentee further claimed that the the Seventh amendment to the Patent Law should be canceled due to inherent flaws in the legislative procedure. Specifically the patentee alleged that the Knesset members were presented with a false picture of what the current Law was and the effects of the amendment, such that the amendment was based on a flawed understanding. This allegation was thrown out, as it was not proved, and there is a working assumption that the Knesset committees are open to hear all views of relevant parties and thus there is a working assumption that final amendments are based on a proper intelligent understanding.

The patentee also claimed that under Section 17c(i) of the Knesset Law סעיף 17(ג1) לחוק הכנסת the Commissioner of Patents should have made the Knesset a party to the opposition proceedings. This claim was also thrown out based on the precedent 4550/13 Bahat vs. Ministry of Health.

During the original hearing regarding shortening the patent term, the patentee argued that since there were no special regulations for calculating patent term extensions, the Amendment should be thrown out as inapplicable. The Commissioner rejected this position claiming that the calculation does not require special regulations since the Law itself explains the method of calculation making regulations for this unnecessary and superfluous.

In addition, Merck argued that even if the Commissioner considers his hand tied and that he has to apply the seventh amendment retroactively as per Section 22, he still should not understand this to mean that the patent would lapse on 22 January 2016 instead of 23 June 2017. Merck requested application of Section 64(9)a of the Law that states that “a patent term extension will remain in force, as per 64(10) for a period equal to the shortest patent term extension granted by a country offering patent term extensions (excluding temporary extensions) from a known country” [Bolar Country – MF]. The shortest term was the 497 day extension granted by the USPTO and should be the maximum extension.However, this was granted only on 23 August 2006 and didn’t exist on 22 September 2005 when the patent term extension issued.  Nevertheless, the patentee is entitled to 14 years post regulatory approval marketing under patent conditions from the earliest approval, which was Germany on 17 October 2016 and not 22 January 2016, so even if an extension to 23 June 2017 is no longer applicable, Merck was still entitled to a patent term extension until 17 October 2016.

All the above arguments were raised in the the original hearing regarding shortening the patent term before the Commissioner of Patents who threw them all out, ruling that the patent should lapse on 22 January 2016. Citing the patent term extension in IL 83148 to Roche (13 June 2007), The Commissioner considered that any interpretation of the transitional period to cases where the patentee’s rights were not damaged would empty the legislation of meaning. Furthermore, the Commissioner cited a Supreme Court precedent relating to retroactive taxation of the findings of oil exploration, that made it clear that retroactive legislation that canceled property rights though problematic, were, nevertheless possible.

As detailed in Calne , the Commissioner considered that the 7th Amendment was carefully crafted to strike a balance between the different interests and was in accordance with the limitations of the Basic Laws, and, citing 4550/13 Bahat vs. Ministry of Health  stated that the Courts would only intervene in Knesset legislation in extreme cases, and not where the Knesset merely regulates the market and economy, and that the courts should act with restraint. Furthermore, the transitional legislation makes clear what the Knesset chose from the various available options.

The Commissioner considered that there was a lack of evidence supporting assertions of the patenteee that Knesset were unaware of the patentee’s interests when amending the Law. Furthermore, the protocols of the Knesset committee meetings from 11 October 2005, 7 November 2005 and 12 and 13 December 2005 indicate to the contrary.

Finally, arguments to use the German patent as the basis of the extension were rejected by the commissioner as this would imply applying the eleventh amendment before it was legislated.

The Appeal

the appeal

In their Statement of Appeal, Merck reiterated their arguments as previously submitted to and rejected by the Commissioner.

Judge Greenberg considers that these arguments may be variously categorized as (i) interpretation of the Law, (ii) Constitutional arguments, and (iii) technical arguments.

The Association of Israel Industrialists requested that the Commissioner’s ruling be upheld, and accused Merck of submitting a creative interpretation that did not sit with the wording of the Law, and the retroactive nature of the Law clearly applied to both procedural and substantive issues. The Seventh amendment was not a new judicial regime but merely a clarification of the Knesset’s intent regarding the third amendment. Although the eleventh amendment was not retroactive, it is clear that the seventh amendment was.

As to basing the extension of the US, it was Merck who decided to use the US as the country of record, selecting this as per the third amendment as interpreted by Axelrod, and the Commissioner was right to consider the US extension only, and not to relate to the German case.

The Ruling

After considering the submissions of the parties, Judge Greenberg concluded that the Appeal should be partially accepted. As far as the patentee’s assertion that the transition clauses of Section 22 should only be applied procedurally but that the retroactive application of the Law damaged a granted property right and should not be applied, this was unacceptable. Laws are generally expected to apply henceforward. However, this generalization can be challenged when explaining the Law. In this instance, Section 22 does not allow a from now onwards explanation since it states explicitly that the guidelines of the main law, as legislated, shall apply to pending patent term extensions and to patent term extensions that have been issued as long as the the basic patent is still in effect.

Thus it is clear that the amendment to the Law may be applied retroactively to already issued extensions. The Amendment is clear and is not open to creative interpretation.

Furthermore, Section 22b states that new considerations for granting a patent term extension could not be applied retroactively. Thus it is clear that the legislators were aware of the difference between legitimate challenges to property rights and those that were illegitimate.

This raises the issue of the legislator’s intention in the amendment. The Association of Israel Industrialists argued that the purpose of the retroactive nature was to repair the damages from the third amendment to prevent the Commissioner’s interpretation in Novartis, which the legislators considered was contract to the intention of the Law, and resulted in the 7th amendment.  The patentee disagrees and claims that the amendment had nothing to do with Novartis which was not appealed and the Association of Israel Industrialists never tool any steps to change this ruling. Rather, the Association of Israel Industrialists ran to the legislative to amend the Law, shifting the balance away from the drug developers and in favour of the generic companies it represents.

The Association of Israel Industrialists’s position in this regard is persuasive to the judge. The Appellant (patentee) has not given any alternative explanation for the retroactive effect of the amendment and so has to claim that the legislative committee was mislead. These claims of of flaws in the legislative process require some evidence which is not there. Rather, as the Association of Israel Industrialists has demonstrated, the Committee considered a wide range of perspectives from the relevant players and this leads to an assumption that the they did their job properly and the amendment is based on a full consideration of the conflicting concerns.  Consequently, the Law is exceptional in that it consciously and intentionally retroactively changes the duration of patents from their duration prior to the rule without the Appellant being able to explain this. Alternatively, one can conclude that the amendment was designed to correct a lacuna in the original amendment and the Appellant is wrong to consider this separate and independent from the Novaris case.

Thus contrary to the Appellant’s reading, the Judge refers to the words of explanation for the amendment (Proposal 187 from 5 July 2005, page 1002 which states that “The proposed legislation is designed primarily to to clarify issues that were raised in applying the Law concerning patent term extensions and the conditions for applying for them, and for the way of calculating the extension and when it terminates”.

Thus it is clear that the Extension was designed to clarify the way extensions were calculated and not to create a new calculation that contradicted that of Section 3. The Section 7 amendment was  did not relate to Novartis, it was only related to in the decision, only in the poorly worded Law itself, which led to the explanation given in the Novartis ruling.

Had the legislators had the skill to word the third amendment correctly to reflect their intention, as they did in the 7th amendment), the Novartis ruling would never have issued, and the law would have remained as it was.

This leads to two conclusions. Firstly, as far as explaining the Law is concerned, it is clear that the law should be interpreted such that the transition clauses are as stated and that the Legislators intended the calculation as stated in the 7th amendment, for previously extended cases as well because the purpose of the amendment was to correct them. Secondly, in the constitutional area, one can conclude that the amendment is in accordance with the limitations of Section 8 of the Basic Law Human Dignity and Freedom, since the retroactive application is proportional. This is also clear from the three tests that the courts use to review the proportionality of laws, and are appropriate in the case in question that relates to the transition period. See Supreme Court Appeal 1715/97 The Investment Agency of Israel vs. the Minister of Finance, P.d. 51 (4) 367 (1997), page 407.

The relevant law is Section 64(xi)a which states that  the extension will remain in effect as per section 10(x) for at least the shortest of the extension periods given for the basic patent, apart from temporary rulings where necessary.

The judge noted that according to the commissioner and to the respondent, once it is clear that the extension given in the US is the shortest extension,despite it issuing a year after the patent term extension, it is, nevertheless, the shortest extension. Whilst this interpretation is in accordance with the terminology of the Law which specifies the shortest extension without relating to when it issues, this interpretation means that a later decision can shorten an extension that has already issued.  Judge Ben-Zion Greenberger considered this interpretation untenable since it would make all patent terms unknown and would leave things open making it impossible for companies to plan.

Judge Greenberger also considers the extension granted in the US under the third amendment should not be applicable to the Seventh amendment in Israel since the proceeding is different, the rules for calculation are different. The Opposer of the extension does not need to search for the shortest period issued, as per the Commissioner’s ruling in the Novartis case.

On the basis of the above, the Commissioner’s reliance on the US patent to retroactively amend the Extension period was wrong since at the time of the application, it did not exist. Once the US extension is not considered, then there is consensus that the next shortest period was that issued in Germany. Judge Greenberger therefore restored the extension period to 17 October 2016 and ruled 25000 Shekels costs to the patentee.

Appeal against Commissioner of Patents Decision Concerning the Patent Term Extension for IL 110956  for Ezetrol, 10 November 2015.


Although retroactive legislation is problematic and uncommon. It does happen. The change in the Patent Law to allow internet publication of the journal is an example of retroactive legislation.

Interestingly, the Talmud recognizes this legal creation as הפקר בית דין הפקר, that a court can cancel property rights. It may be used to retroactively annul a wedding by making retroactively removing the ring given by the groom to the bride from the groom’s property.

The patentee’s argument is based on the assumption that a patent is a property right and that patent term extensions are therefore somehow inviolate. I disagree. I think that patents are, by their nature, intrinsically uncertain. They can be voided due to prior art at any time after they issue. When patent term extensions came into effect, they were applied to pending patents and to issued patents that were already in force. They granted an additional period of protection to companies that had priced their drugs without knowing that this would happen. Patent term extensions are already exceptions. It was clear to all parties that the Law was flexible and depended on the international agreements. Patent term extensions are thus exceptions to a rule that tries to find a fair balance between competing rights. Since the amendment was supposed to ensure that Israel manufacturers were not disadvantaged when compared to their foreign counterparts, the amendment was knowingly and willingly legislated so as not to disadvantage Israel manufacturers. There is nothing final about patent term extensions.

Achieving a partial success and using the German patent instead of the US one as the basis for the patent term extension was an achievement. Nevertheless, we suspect that this ruling will be appealed to the Supreme Court.

Copyrights and Wrongs

November 19, 2015

all animals

In Orwell’s novel 1984, the Seven Commandments were eventually distilled into “All animals are equal but some animals are more equal than others“.

Copyright is supposed to be a one size fits all regime, under which all creative works are protected for a fixed period, currently 50 or 70 years from death of the author depending what the creative work is, when it was created and where in the world the copyright is applied.

The argument for this veeeeeerrrrrry long period is that without it, creative types wouldn’t exert themselves to create and the world would be a less colourful place to live.

The simple accounting procedures used by actuaries to calculate the present day value of income in 50 or 70 years implies that this justification makes no economic sense, even if we one buys the assumption that the created work would not have been created were it not for the copyright protection.

In the Copyright Term Extension Act of 1998, the United States harmonized their  copyright term with Europe’s. The Act is known as the Mickey Mouse law, since it prolonged the term of valuable copyrights held by the Disney corporation.

All creative works, for those dawdled on a napkin or the back of an envelope, through private correspondence, songs that no-one listens to, books that no-one reads,  through to the international best sellers and texts that become part of high school curricula have the same protection term. Unlike designs, trademarks or patents, there are no registration requirements and no extension fees.

Then there are the exceptions.


The Anne Frank Foundation claims that Otto Frank, Anne’s father was a coauthor of the diary and so it should remain copyright protected until 70 years from his death in 1980. They don’t argue that this will provide an incentive to Ms Frank to continue writing, or even that the diary which was never meant for publication was written with copyright in mind. They claim that copyright is necessary to protect Ms Frank’s character’s integrity.  They don’t explain how Otto Frank’s apparently significant censorship, editing and rewriting, after Anne Frank’s murder did not contravene her moral rights or right to privacy.

mein kampf

There has been discussion on keeping Mein Kampf copyright protected to prevent its dispersion. Odd really, since Hitler never had a problem with it being widely available. If one wants the holocaust to be studied, both Anne Frank’s diary and Mein Kampf should be available. If one wants to prevent Ultra Right Ring nationalism from recurring in Austria and Germany, one can prevent neo-Nazi groups from meeting. I don’t think that the British Red Cross is still gaining from royalties from Mein Kampf but the fact that in 1939 they did should make one wary of statements and reports from charitable organizations claiming apolitical objectivity.

Copyright exceptions are more common than one might think.

the little prince

Antoine de Saint-Exupéry was killed in 1944, during a flight over the Mediterranean Sea. “The Little Prince” is the third most popular novel in the world, translated into over 250 languages. More than 80 million copies have been printed. On 1st January 2015 “The Little Prince” entered the public domain 70 years after Antoine de Saint-Exupéry’s death – except in France.

In France, works of authors who died for France during the First and Second World Wars benefit from additional copyright protection. In France, the novel will pass into the public domain sometime between 1 May 2033 and 1 January 2045.

to die

The there is the Peter Pan bequest. Peter Pan’s copyright should have expired 70 years after Barrie’s death in 1937. However, J. M. Barrie bequeathed all the rights to Peter Pan to the hospital in 1929 and they have provided badly needed funds ever since. The British Parliament legislated a lex specialis to keep the copyright protection going.


Concerned with commercialization of the Pontifical character, the Vatican passed a special copyright law to prevent others from referring to goods and services as being Papal. They apparently seek to establish and safeguard the name, image and any symbols of the Pope as being expressly for official use of the Holy See unless otherwise authorized.


Changing Owners of a Patent

November 5, 2015


IL 191359 titled “DEFENSE SYSTEM FOR INTERCEPTING ELEMENTS WITH TARGET DIRECTED ENERGY BEAMS TRANSMITTING UNITS” was filed in 2008 in the names of Steven Shemesh, Giora Nir, Robert Landon Roach and Eliezer Abraham Shwartz. Hiowever, IL 222617 which is a divisional application of the first patent was filed in the name of Sahar LTD

Steven Shemesh requested that the second patent be filed in the names of the inventors as per the first patent. After a hearing was scheduled with the patentees of the first patent and a representative of Sahar LTD, the other parties filed a request to assign the patent to the names making the hearing redundant. The patent office accepted the assignment but noted that one of the parties,  Eliezer Abraham Shwartz was deceased, so ruled that his name should be followed by Z”L, an acronym meaning Remembered for a Blessing and roughly equivalent to RIP. The parties were given six months to register their shares and the attorney of record was ordered to provide a copy of the ruling to the beneficiaries of  Eliezer Abraham Shwartz Z”L, and the hearing was cancelled.


Inventors have the right to be named. Patents, should, however, be owned by companies rather than by a bunch of individual inventors. All patentees can  license the product or sell their share to anyone they like. With a patent directed to defense systems, this seems a little anarchistic.

A decision to read over coffee

October 26, 2015

In February 2008 Alon Intrade LTD filed a number of coffee related trademark applications that issued between December 2008 and August 2009. The marks include Si Caffé as text in Hebrew and English and a stylized application, and Si Espresso as text in Hebrew and English and as a stylized application.

Si Cafe  Si Espresso
The class 30 registration was for cold and hot drinks including tea and coffee, cocoa, rice, tapioca, sago, ersatz coffee, flour, baking foods and cereal grain products particularly bread, cakes and baked goods, pizza and frozen pizza, flat cakes cooked cakes (pancakes?) and frozen cakes, sweets, confectionery for baking, honey, honey like syrup (molasses?) yeast, baking powder, salt, mustard, vinegar, spicy sauces, sauces, spices, and ice for drinks.

The class 43 registration were for food and drink vending services including the sale of sandwiches, salads, cakes, hot and cold meat and milk products, sale and serving of all types of coffee, hot , cold and alcoholic beverages, all in class 43.
In December 2013, S.A.M. Coffee services LTD requested the cancellation of the marks. , S.A.M. Coffee services LTD has the following mark: The marks owned by S.A.M. Coffee services LTD ‘s marks were filed in December 2001, in classes 30 and 42 for coffee, ersatz coffee, flour and grain based products and baked goods and for providing food and drink.

S.A.M. Coffee services LTD claimed that they run an established chain of coffee shops called Sicaffe that is known in Israel and abroad for its high quality products and service. The chain roasts the coffee beans and bakes bread in house and has proprietary blends of coffee beans.

This is S.A.M.’s mark.


S.A.M. Coffee services LTD claims that Alon Intrade LTD’s marks are confusingly similar to theirs, and that the word marks Si Café and Si Espresso lacked distinctiveness and create unfair competition and should therefore be canceled under Section 39a on the grounds that under sections 8(a), 11(6) and 11(9) they should never have been registered in the first place.

Furthermore, S.A.M. Coffee services LTD claim that they first learned about Alon Intrade LTD’s marks Si Café and Si Espresso when a consumer affairs program investigated Si Café and Si Espresso and concluded that they recycled their products to the customers, and that people wrongly attributed this behaviour to Sicaffe due to the similarity of the marks.

Sicaffe submitted an affidavit that supported their allegations nd that explained that the first Sicaffe shop opened in Ramat haChayal in 1998 and in 2011, a second shop opened in Tel Aviv. The chain opened two coffee shops in New York in 2003 and 2004 and two more in Russia in 2013.

Sicaffe further noted that Alon Intrade LTD used the two trademarks interchangeably. For example, in Netanya, workers in Si Caffé wore uniforms with Si Espresso printed on them, and the payment receipts used Si Espresso as well. In Si Espresso the name Si Caffé appears on the cups, sertviettes and take-away bags.

Alon Intrade LTD responded that they had set up a chain called Sigafreido Espresso Bar that, over the course of time was shortened to either Si Caffé or Si Espresso, depending on the character of the individual coffee shop.

The chain(s) include 16 shops along Route 6 and at Ben Gurion Airport and serve thousands of customers each year. The annual turnover is millions of Shekels and there was never a confusion with the Opposer’s chain. Furthermore, the marks were examined and allowed despite Sicaffe’s earlier registrations. Since Sicaffe had not objected over four years, they were estoppeled from so doing.

Alon Intrade LTD also argued that there was no likelihood of confusion between the marks which all comprised common words that no one was entitled to own. Furthermore, they had disclaimed rights in the elements of the marks.
Alon Intrade LTD explained that the Si Caffé and Si Espresso marks were the result of a rebranding in 2008 and that the marks have been in continuous use since then.

The Si Caffé mark is used in restaurants that offer a culinary menu that is a fusion of the Israeli and Italian kitchens, whereas the Si Espresso mark is used for self-service cafeterias. The outlets also use the non-registered mark ‘Si Express’ for the new Grab & Go concept.

Due to the location of the coffee shops and the cooperation between the chain and their customer club the registered marks are seen by 1.5 million customers a year. In addition the company invests millions of shekels in marketing and promoting the chain via advertising and managing the customer club, relationships with other customer clubs, works organizations in different sectors and the like. Because of cooperation with the popular navigation program WAYZ, drivers are alerted when they are near branches of the chain.

The witnesses were cross-examined on their statements on 12 January 2015.


Section 39 of the Trademark Ordinance defines a 5 year period beyond when a mark is registered during which a mark that should not have registered due to one of the provisions of sections 7 to 11 can be canceled.

There is no argument that the cancellation procedure was initiated within this period, however the mark owner claims that the Applicant for cancellation is estopelled from so doing. This, is, however, not the case. Failure to oppose a mark does not deprive third parties from initiating cancellation procedures. The claim has no legal support and is also unreasonable. Not all players follow the trademark register avidly and so there are provisions for correcting the register, including cancellation of marks. Indeed, as is clear from the Versace case even unsuccessfully opposing a mark does not prevent the opposer from later initiating and winning cancellation proceedings – See here, here and here.

As the Ordinance itself gives 5 years from issuance for a mark to be cancelled for the grounds in Sections 7 to 11, there is no room to claim that a four year delay is covered by a statute of limitations. The defense of tardiness is inadequate. It would however be reasonable to rely on a specific surrendering of the right to challenge. In general, cancellation proceedings and oppositions by third parties are a way of ensuring the integrity of the trademark register, including uncovering and correcting mistakes made by the Israel Patent and Trademark Office. The cancellation procedure does not only serve the competitor who initiates it, but also serves the public good. The costs involved and the burden of proof are sufficient to limit third parties from filing frivolous cancelation proceedings.

In this regard, Ms Bracha refers to Kerly’s Law of Trade Marks and Trade Names”, 15th ed. (2011), p. 345 by James Mellor, David Llewelyn, Thomas Moody-Stuart, David Keeling, Iona Berkley which shows that UK and European law also have a similar five year period. She does, however note that a significant period of coexistence may indicate that consumers are aware of the subtle differences between similar brands. However the Applicant for cancelation’s statement of case concentrates on the similarity between marks which allegedly has resulted in consumer confusion and unfair competition.

Ms Bracha therefore applied the (five part) triple test and considered:

  • the appearance of the marks
  • the sound of the marks
  • the distribution channels
  • the customers
  • everything else of interest

and cited the relevant case law (pro-pro biscuits, Bak Igud vs. Bank Agudat Israel, HaMishpacha, Tam Teva and Ambrosia.

As to the appearance of the mark, the challenger’s mark is for Sicaffe with a white coffee bean within a black triangle. The challenged marks include graphic marks Si Café against a red background and Si espresso against a grey background and the word marks Si Caffé and Si espresso with disclaimers for the words café and espresso.

The challenger’s mark includes the words Si Caffe in common with the challenged mark. The Deputy Commissioner does not consider the extra f in caffe as having a major effect on the average consumer.

The word Si is the extra element where café and espresso are generic words. Si means yes in Italian and may be considered as being a laudatory word that indicates an Italian connection [which is considered as indicating quality and style as far as coffee is concerned].

Although in marks of this nature it is common to analyze the mark into its elements, really similarities of the marks as a whole should be considered when assessing the likelihood of confusion.

Both marks have graphic elements and use fonts that are somewhat different.

Citing Kerly page 313:

“It follows that if the respective marks are similar in respects which are distinctive and origin specific then this will tend to increase the likelihood of confusion. Conversely, if the marks are only similar in respects which are descriptive or origin neutral then this will tend to decrease the likelihood of confusion; indeed it may result in a finding that the marks are not even similar.
The public will not generally consider a descriptive element forming part of a complex (or composite) mark as the dominant element of the overall impression created by the mark; it is the dominant elements of the marks that are critical in the overall evaluation, although it is only if all the other components are negligible that the assessment can be carried out solely on the basis of the dominant element”.

Thus where the words selected are generic or common place and laudatory a greater emphasis may be given to the graphic elements. See the decision concerning Israel Trademark 223957 Chic Design.

In conclusion, the graphic marks are sufficiently different visually to coexist but the word marks, including Si Espresso are too similar to be valid. Sicaffe and Si café sound the same. Si espresso sounds rather different.

When comparing the relative importance of the appearance and the sound, the case law in 5066/10 Appeal Angel vs. Berman (30 July 2012) – specifically Section 27 explains that there is a difference between goods ordered over the counter, where the sound is more important, and goods selected from a shelf in a supermarket or the like, where the appearance is more significant in deciding whether or not there is a likelihood of confusion.

According to Deputy Commissioner Bracha, the mark holder himself notes that consumers select sandwiches and prepared portions from the shelves, apart from one branch which offers a full waiter service. Each package bears the logo and so, reasoned Ms Bracha, the visual aspects are more significant than the sound.

As to customers and distribution channels, the challenger has regular customers and the marks holder primarily serves passing traffic on route . That said, the challenger does serve passers-by and the mark holder may have regular customers. The customer base overlaps although is not identical.

The mark holder’s chains generally sell bars of chocolate, ice-cream and sometimes burgers and chips, chicken wings and the like, whereas the Applicant for cancellation makes salads and bakes bread, and even their thousand island dressing is prepared on premises and not poured from a bottle or dispensed in sachets [MF – I bet they don’t blend anywhere near a thousand islands together though].

Ms Bracha notes these differences but does not consider them significant enough to render the likelihood of confusion impossible as they are in the same class and are substitutes for each other to a large extent.

Other Considerations – Under this heading other relevant factors that might confuse the public or reduce sales are considered.

From the evidence it is clear that the two marks have coexisted since 2008 and since the challenged marks were the result of a rebranding exercise they were in wide-scale use from the beginning. The cancellation proceeding was initiated four years after the mark was registered. The failure of the initiator of cancellation proceedings to warn the mark holder or to otherwise express dissatisfaction does not prejudice his rights to initiate these proceedings.

Nevertheless, failure to act more promptly does to some extent indicate a lack of confusion The initiator of the cancellation proceedings alleges that the proceedings were initiated due to consumer comments and the Kolbotek consumer affairs program investigation.

It is not inconceivable that customers of the initiator of the cancellation proceedings believe that their shops are strewn along Route 6, but they haven’t supplied evidence that this is the case, and since this is a cancellation proceeding and not an opposition, the onus of proof is on the initiator of the proceedings.

The Deputy Commissioner considers that the word marks should never have been allowed to register in the first place and the passage of time is insufficient to remedy this.

Whilst the word marks do appear on receipts and the like, the main use is that of the visual elements in the signs and food markings. As the marks owner uses the logos and word marks almost interchangeably, their claims that the espresso mark is different is undermined.

In conclusion, the word marks 208117, 208121, 208119, 208124, 208128 208130 should not have issued under Section 11(9) of the Ordinance and are canceled.

The graphic marks 208116, 208120, 208127, 208130 are sufficiently distinct that the request for cancellation is rejected based on the analysis above.

Since six out of 10 marks are canceled, the 208116 the initiator of the cancellation proceedings is entitled to costs, but these should be reduced in view of the four marks that weren’t canceled. The initiator of the cancellation proceedings did supply figures but did not provide receipts and invoices to substantiate their claims.

In consequence, an award of 6000 Shekels and legal costs of 20,000 Shekels are appropriate.


I disagree with Ms Bracha’s logic as per the sight and sound of the marks. The goods within the shop are not sold side by side. The ambiance within the outlets may be different. The question is whether people arranging to meet at ‘SiCafe’ in, say Tel Aviv, could find themselves in different outlets and whether adverse publicity such as the consumer program report, or, for arguments sake, an incident involving a customer suffering an allergic reaction, a report regarding cockroach or rat infestation or an incident reported in the paper regarding Kashrut infringement in one chain could adversely affect the business of the other chain. I think that there is a real danger of this.

Si Café’ is a rebranding effort from Sigafreido Espresso Bar. Is it unlikely that a different logo might be considered updated packaging? Logos and packaging change over time. This is appreciated by the trademark office since no issue is ever totally put to rest and changing circumstances can result in a previously resolved dispute flaring up again and requiring a further ruling and possibly a different resolution.

In the case of Eden water, the word phrase Nature’s Champagne in an advertising slogan for still mineral water was considered a serious infringement. There was obviously no likelihood of confusion. There was, however, perhaps a case of ‘dilution’. A similar sounding mark can have this affect. An invitation for a business meeting at Sicaffe may sound less attractive to someone who stops for a coffee and a bag of chips at a self service cafeteria with a similar name.

When Different Applicants Request Patent Term Extensions (PTEs) For Different Patents Based on a Common Patent and Regulatory Approval

October 26, 2015


A semi-official version of the Israel Patent Law 1967 as currently amended is found on WIPO’s website. There have been three amendments of the Section of the Law that relates to Patent Term Extensions which is found in Sections 64a-64q, some of the letters relating to sections that have been repealed.  The last amendment was in 2014 and so there are some clauses that have not been explained by a court. Due to the enormous value of even very short extensions, there have been a number of applications for Patent Term Extensions which have raised interesting questions.

This Ruling concerns patent term extensions for four separate patents having different applicants. The patents are IL 159512, IL 127115 and IL 130492 and pending application number IL 132304 to Immunex, Daiichi Sankyo, Amgen and Amgen Freemont, and Amgen respectively.

All the requests are based on a patent term extension for Prolia which has the active ingredient Denosumab. The drug is designed to strengthen bones and is prescribed for women with postmenopausal osteoporosis.

The four separate applications for patent term extensions were all filed on 1 September 2011 by Reinhold Cohen representing the different applicants.  The patent term extension requests for IL 127115 and IL 130492 fall under the regime of Section 16b1 of the Eleventh amendment which sets out the transition period and requires the Commissioner to complete examining pending patent term extensions within two years of the patent issuing or within two years of the amendment coming into effect, whichever is later.

The time-frame of IL 15912 is in accordance with Section 64O as will IL 132304 should it issue.

On 22 January 2015 the applicants challenged the Examiner’s ruling under Section 161. In brief, the Applicants rejected suspending considering the patent term extension requests for IL 127115 and IL 130492 until after IL 15912 issues or until 27 January 2016.

The commissioner issued an interim ruling in accordance with Regulation 151 that states that: where different applicants request a patent term extension based on the first patent to issue for a specific active ingredient, each request will be examined on its merits until the Commissioner publishes one of these rulings after examination on the merits. Based on a comparison to Section 9 of the Patent Law, where two or more applicants request a patent extension based on the same earlier regulatory approval, the first to file takes precedence where there are no other extraneous circumstances to cause a different application to be preferred. The commissioner does not consider that in a case where different applicants come to an understanding and co-file requests for patent term extensions, he should in any way be bound to go along with them. That said, as the Applicants noted, since one or more patent applications may be rejected, it is reasonable to suspend requests for a patent term extension of later filed applications until one case is granted an extension. Essentially therefore, applications will be examined in turn according to their filing date.

The Applicants of 127115 and 130492 requested a hearing to discuss the above ruling which was held at the end of June 2015, and as a result of this, the examination of these patent term extension requests were suspended. In June 2015 the applicants filed their summaries and a hearing was scheduled. Due to this procedural delay, the requests for Patent Term Extensions of 127115 and 130492 are still pending. In the meantime, Application 159512 has issued and IL132304 has been allowed and published for opposition purposes.

In April 2015 the Applicants noted that a patent term extension was granted in the United states for US 6,740,522 to Immunex titled “Antibodies against ligand for receptoractivator of NF-kB” which relates to Prolia. Amgen and Amgen Freemont were then informed by the patent office that since the US patent as extended still lapses before the Israel issued patent for IL 15912 even without an extension, their application is moot. The applicants requested further suspending ruling on the patent term extension until IL 132304 is allowed. The Commissioner would rather examine the first case until allowance, making examining the other cases moot.

The Applicants’ supported their request with the following argument:

Until a patent term extension issues, none of the applicants should be restricted in any way. The only reason given in Section 64D for not granting a patent term extension is that one has already been given based on the basic patent and regulatory approval for the active ingredient. If this has not yet happened, all applications for patent term extensions are legitimate.
Thus a number of statements of intent to grant patent term extensions all based on the same regulatory approval of the same basic patent can issue.
The Applicants cited the patent term extension granted in 83148 to Roche Diagnostics GmbH and to IL 120701 to Wyeth to the effect that the rights to a patent term extension come into effect with it issuing.
According to the Applicants, Section 64D(4) relates to granting an Extension and should not be applied to intentions to grant.  A statement of intent to issue a patent term extension is not the same as a patent term extension order. It is not inconceivable that several statements of intent for different patents could issue. Textual support that a ‘patent term extension order’ and ‘intent to issue a patent term extension’ are not the same thing is found in Section 64L which relates to the lapsing of a ‘patent term extension order’ or an ‘intent to issue a patent term extension’ thereby making clear that these are not the same thing.
As Section 64L and Section 64K(3) teach, an ‘intent to issue a patent term extension’ can lapse, thereby indicating that this may happen prior to an actual order issuing. This indicates that the legislation should certainly have related to any intention to issue other patent term extensions than the one pending publication of the intent to issue. As detailed below, this need does not occur in Section 64D(4) of the law which relates to conditions for not granting an earlier order.
The Commissioner does not consider that the publication of several Intents to Grant Patent Term Extensions can help the Commissioner apply Section 64D(4) of the law, which does not allow granting an Extension for a drug based on an active ingredient that has been previously used as a basis of a patent term extension. The Commissioner understands Section 64D(4) as requiring publication of a single intention, thereby being clear to the public.
The Applicant’s understanding that the patent office should publishing several intentions for several drugs does not address the fact that eventually only one will be allowed. Consequently this will simply sow seeds of doubt. The term intent means real intent for a single application for a single patent term extension.
Section 64E relates to additional publications concerning the progress of a particular application. The applicants don’t believe that the final publication is indeed a final publication as future patent term extensions from other countries could change this.

The Commissioner does not consider such readings reasonable. According to the Commissioner, the Eleventh amendment which included Section 64E creates a split opposition proceeding such that the Section 64EE(1) publication demonstrates that the Application fulfils the basic requirements for which it was granted, and separates the calculation of the term for separate opposition. In this regard, section 64G(2) relates to the later opposition that only relates to the duration of the Extension and cannot be used to challenge the Extension on grounds appropriate to Section 64EE(1). Thus without a prior opposition under Section 64EE(1) the register remains clearer.

The Applicants understanding could result in the commissioner having to publish a string of notices and this will create a lack of clarity. This is not merely theoretical. US 6,740,522 and two other patents were cited as the basic patent in the patent term extensions applications for IL 15912 and IL 130492. Thus patent will lapse on 17 September 2021 which is after the natural life of IL 15912

The applicants consider that publishing an intention to grant an extension for one patent prejudices other patents behind it in the queue. The Commissioner rejects this assertion as it is the same for all publications. In other words, where two patent applications claim substantially the same invention, the first one filed is examined and the examination of later filed ones are suspended. Should the first one be withdrawn or canceled, the second one is examined on its merits.
Were IL 132304 to be eligible for a patent term extension, or even were it to be opposed, the two year period provided for in the eleventh amendment could not be met.

In summary, the Commissioner is not convinced that there is any reason to suspend the request for a patent term extension for the ‘115 and ‘492 cases until the ‘304 case issues if it ever does, and so his earlier ruling stands. The applicants of IL 15912, IL 127115 and IL 130492 are given 60 days to respond to the office actions listing missing information.


This was an imaginative submission. I think that on balance, the commissioner’s interpretation of the Law is better.
I am not sure how one firm of patent attorneys can represent four different applicants in a race to receive a Patent Term Extension PTE based on the same earlier regulatory approval. To some extent the drugs in question may compete with each other. Even if they don’t compete for treating the same illness, only one patent will be entitled to a patent term extension. It seems, therefore, that Reinhold Cohen has a conflict of interest here. No doubt, they understand conflicts of interest differently from me as well.

Method and System for Producing a Document

October 6, 2015


Israel Patent Application number IL 215110 titled “Method and System for Producing a Document” relates to Rami Dotan and Tal Petel relates to a method of producing a “yearbook”.

The claimed invention was originally rejected as relating to an administrative methodology rather than to a technical method. Furthermore, the claimed invention was rejected as known, in light of WO 2006063327 “Method of creating a yearbook”.

In response to the first office action, the first inventor scheduled a meeting with the Examiner who explained the rejection in more detail.

The Applicant responded to the Examiner’s summary of that meeting, that there is a technical problem in the market in that the graphic designer does not know the students and so it is difficult to correctly link photographs with text.

On 7 August 2013, The Examiner issued a further Office Action detailing why the claimed invention did not relate to patentable subject matter under Section 3 of the Law and added some additional objections.

On 17 November 2013 The Applicant responded with a narrower claim set that allegedly overcame the objections.
In a final rejection dated 26 June 2014, the Examiner again refused the application and the Applicant requested a further Interview.

On 5 November 2014, the Applicant, his “representative for the purposes of the Interview” (apparently Patent Attorney Chaim Brandstatter) and the Examiner met, and versions 4 and 4 1/2 of the claims were discussed. Based on the similarity of the cited art WO 2006063327 “Method of creating a yearbook” and the claimed invention, the Examiner was persuaded to withdraw his section 3 (patentable subject matter) rejection and to focus on the issue of novelty and inventive step (non obviousness).

Furthermore, the parties accepted that the differences between the cited art and the claimed invention were features known to persons of the art.

Following the meeting of 6 November 2015, the Applicant submitted a further version (version 5).

Despite the Examiner considering the claimed invention to be obvious in light of WO 2006063327 together with two elements well known in the art, the Examiner did a further search and discovered USSN 2002/0055955 “Method of Annotating an Image” that allegedly taught these two features. Consequently, the Examiner refused the application under section 5.

The Applicant appealed this decision:

The Applicant felt that the 5th version of claims, submitted after 5 November 2014 was not addressed. The Examiner countered that the elements in version 5 were not supported. The Applicant considered that this went against the conclusion of the meeting, Examiner guidelines and Section 23 of the Law.

According to the guidelines, after issuance of a final rejection, the Applicant can either correct the outstanding issues or request an interview. In this instance, the Applicant attempted to do both, and following the interview, submitted a further claim-set. Thus the Examiner was within his rights to reject the Application following the interview, despite the further amendment submitted.

Neither the Law nor the Regulations provide a maximum number of Office Actions, but the Deputy Commissioner, Ms Jacqueline Bracha considers it unacceptable to understand that the examination allows infinite iterations and the Examiner cannot issue a final rejection.

That said, the case was considered borderline and the Deputy Commissioner was prepared to rule on the merits of the claimed invention, i.e. to look at the final version of the claims.

The claimed invention is:

1. A method for producing a document (30, 32, 36) comprising photographs (38) of persons (16A, 16B, 16C) and texts (42) associated with said photographs (38), said method comprising the steps of:
Manually capturing a single photograph or a single group (A, B, C) of photographs for each of said persons (16A, 16B, 16C), by a photographer (24), and loading the photographs while recording the singularity to a first table (58) of a database (52) being a part of a site (22) on the internet (14);
Manually providing by an organization in which said persons (16A, 16B, 16C) are members, a second table (26) to said database (52), said second table (26) comprising one text (42) for each of said persons (16A, 16B, 16C);
Manually matching, by persons familiar with said persons (16A, 16B, 16C) each of said texts (42) of said second table (26) with one of said photographs of said first table (58);
Upon said manual matching, programmably hiding that text (42) and the photograph matched thereto and any photograph grouped thereto, thereby avoiding failures;
Manually printing, by a graphic artist (20) accessing said database (52), each of said matched photographs (38) adjacent to the text (42) matched thereto,
thereby tracing a failure once a text of said second table (26) cannot be matched with a photograph.

Claims 2-10 are dependent method claims and claim 11 is for a corresponding system.

The claimed invention is similar to the first citation, with two features taught in the second citation.
Since the Applicant does not provide an alternative method of implementation to that given in the prior art, the claimed invention is either not enabled or lacks inventiveness.

Section 12 requires enabling disclosure. Where a method of achieving the claimed invention is not provided, one can conclude that either it is not possible or that it uses known elements and is thus obvious. Either way, in this instance, the Application does not provide enabling disclosure and is thus not allowed.

In conclusion, the Application was rejected.


In Australia, the patent corresponding to WO 2006063327 did issue back in 2005. I am not sure though, that it would still be considered directed to patentable subject matter as such computer facilitated inventions are rather difficult to obtain.
From the number of dubious publications with titles such as Directory of World’s Leading Patent Experts that I am invited to appear in subject to paying exorbitant fees, it does seem that there are patent attorneys who missed out on their high school yearbooks and are willing to pay to see their mug-shot and biography in a directory that no one reads.


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