LLM in Patent Law at Haifa finally on its way

December 11, 2014

haifa university law school

Back in June 2009, I reported on the ceremonial launch of Haifa University’s Masters in Law program in Patent Law – see here.

Recently fired Minister of Justice, Tzippy Livni, authorized the Commissioner of Patents to rule on whether such programs would provide a dispensation from patent office exams for would-be patent attorneys. In September of this year, I reported about the standards for obtaining dispensation from the theory exam for patent attorneys. See here and here. Essentially, so long as the degree covers all subject matter, such as trademarks, designs, basic foreign requirements, international treaties and procedural issues, the top 20% graduating will be entitled to a dispensation from the theory exam.

The long awaited Master’s Degree in Patent Law at Haifa University is finally on the Patent Prosecution Highway on its way. The first intake is this January. Some candidates have already signed up, but there are apparently places available.

It occurs to me, that someone interested back when the program was launched has had time to do the prerequisite science or engineering degree, and to have then done two years on the job training (hitmachut). No doubt however, there are some additional wannabe patent attorneys out there who think that this degree is the key to fame and fortune.

We wish the faculty and students every success with this endeavour!


Orbotech Challenges Cost Ruling, but too Late

December 8, 2014

missed opportunity

Back on 9th November 2014, I reported that after finally ruling on the Camtek – Orbotech patent Opposition, the Israel Patent Office ruled very large costs to Adi Levit, mostly because he’d detailed his cost calculation and it was unchallenged by Orbotech who’d lost the case.

Camtek requested 302,895 Shekels costs (including VAT).  The request for costs were supported by an affidavit from Camtek’s IP manager Michael Lev. The sum includes legal fees of 288,687 Shekels to outside counsel, Adi Levit, 8208 Shekels to the witness Mr Golan, and 6000 Shekels for intermediate costs awarded. All cost requests were supported by documentary evidence such as invoices from outside counsel and salary slips from the witness. Orbotech, represented by Reuven Borchowski, did not counter the request for costs.

In her ruling, Ms Jacqueline Bracha reviewed the intermediate costs to see whether they were affected by the final decision and came to the conclusion that where she had ruled that the costs were incurred by Opposer unnecessarily, they should be discounted.  The costs awarded were 296,895 Shekels.

Apparently, on the day that the cost ruling issued, Orbotech requested that the ruling be canceled, arguing that because of industrial action in the courts, they were unable to respond on the last day as they had intended.

Camtek responded that they could have filed a notice of intent to challenge, the court strike was actually the day after, and a response could have been submitted despite the strike. They requested that Orbotech’s lawyer file an affidavit testifying to why he was unable to respond, and to be prepared to be cross-examined on it.

Ms Bracha decided that the ruling was given fairly and there was no reason to cancel it. The issue was not whether Reuven Borchovsky, attorney for Orbotech had intended filing a response, but whether there were counter-arguments on file when she made her ruling. As there weren’t, she was entitled to simply check the calculation submitted by Adv. Levit. Consequently, she saw no reason to cancel her decision to award the actual legal costs + witness fee – intermediate costs that were unnecessary.


The Mattress Opposition Again

December 3, 2014

wisdom of solomon

Moshe and Anat Gabai have developed a mattress that they believe is useful in minimizing the occurrence of Sudden Infant Death Syndrome (SIDS) in children. On allowance, Aminach, a large Israel mattress manufacturer opposed the patent issuing.

The Applicants who were not represented, managed to overcome the prior art objections relating to novelty and non-obviousness, but were unable to prove that their mattress was effective. Consequently, Deputy Commissioner Ms Jacqueline Bracha ruled that the patent be cancelled as contravening Section 3 due to it lacking utility.

At the time, the Applicants did not have experimental evidence, but they teamed up with a scientist and generated some evidence that their mattress had some value in minimizing cot deaths.

The Applicants appealed to the District Court, however the District Court was not willing to examine this new evidence that wasn’t before the Patent Office.

Undeterred, and this time with professional assistance, the applicants appealed to the Supreme Court which established that in such circumstances, new evidence may be submitted. The case was referred back to the District Court which ruled that the evidence could be accepted and referred the case back to the Israel Patent Office.

Ms Bracha is prepared to accept the evidence provided it is relevant.

COMMENT

I can develop a persuasive theory that the mattress design allows dissipation of carbon dioxide and helps a baby that is lying face down to breath freely. I can think of several ways of demonstrating utility and have discovered a university researcher who is able to run some useful experiments. Unfortunately, the only really convincing evidence would be to conduct experiments with a statistically significant pool of identical twin babies, one twin sleeping on regular mattresses and the other on the Applicant’s mattress. I find the idea a little obnoxious and do not see that utility requires proof.

I think the Gabai’s deserve a patent for this, and am impressed with their tenaciousness.


A Meeting With Israel Trademark Examiners

November 26, 2014

israel patent office logoTM R

The Israel Patent and Trademark Office held a meeting with practitioners on 25 November 2014.

The event was held at the rather odd time of 12 AM to 2 PM which made meeting colleagues for lunch before or after a little difficult. However, refreshments of the cake and biscuit, tea coffee and soft drinks kind were provided.

The chairs in the main hall in the patent office were arranged in a couple of concentric circles, and, although most of the trademark examiners sat next to each other, there was still no clear ‘us and them’ divide. The lawyers had mostly not worn their dark suit and no black ties were in evidence. Even the commissioner was casually clad in an open-necked shirt and no jacket. The informal setting was, I felt, very conducive to creating an atmosphere of working together to further the examination process. There were about 10 patent office employees and perhaps 50 practitioners present. These included former employers, colleagues and employees of mine and a fair sprinkling of competitors, some of whom we’ve crossed swords with in opposition, cancellation or infringement proceedings. There were more attorneys-at-law and less patent attorneys than what one usually sees at patent events, but considering the subject matter, this was to be expected. All in all, it was a good opportunity to meet up with people.

From the questions asked, it seemed that many practitioners felt that the need to translate lists of goods into Hebrew was burdensome and superfluous, and something that the commissioner could do away with by issuing an appropriate Circular. This was considered to be particularly the case as Madrid Applications are filed in English only, without a need to translate the list of goods. The Commissioner merely noted that he was not sure that he agreed that doing so was a good idea, and anyway, it was beyond his authority. I think that such complaints seemed to miss the point that registering trademarks is not just a way of protecting rights for clients, but enables third parties doing business in Israel to see whether a mark is available. This is the point of having a trademark register, and Hebrew is the official language and many Israeli businessmen may not be fluent in English. Nevertheless, former commissioner and current head of the AIPA, Dr Meir Noam, had a good point when he noted that English is a richer language than Hebrew, with more specific terms for lists of goods. I think that lists of goods should be transcribed into Hebrew in a Biblical fashion, so instead of having to find different words for Parkas, Duffle Coats and Anoraks, a term such as ‘hooded coats and their kinds’ could be used. Instead of laboriously translating a list of three hundred electronic components, a general phrase such as electronic components for telecommunications could be used.

One lawyer who complained about the large amount of work involved in translating lists of words. He felt that this caused trademark filings to be unnecessarily expensive. He also complained about the official fees, compared to some other jurisdictions.  It is not clear to me whether the official fees should reflect the relatively small local population or the size of the economy. I suspect that some product sales reflect one and some the other. I note that in some places marks are registered but not examined and so the fees are generally cheaper.

It was difficult to feel sorry for the lawyer having to translate lists of terms into Hebrew. Trademark filing is fairly profitable and doesn’t involve much more than form filling, so if there is sometimes a little translation work, so what? The lawyer’s argument that he charges a standard fee per mark, and sometimes there is a lot of translation work to do seemed a little ludicrous. If he was unimaginative enough to not consider a basic filing fee and supplementary translation fees where appropriate, why should the law be changed?

Other gripes raised concerned the competing marks procedure wherein the applicants of two co-pending applications for the same or similar marks have to persuade the Patent Office that their rights in the mark are better. Of particular chagrin is the fact that once one application is considered as preferable to be examined first, after a long and often expensive and protracted procedure, the application is only then examined and may be rejected as generic, non-distinctive, or too similar to a registered patent.

Some present felt that an indication of the likelihood of being registerable should be given prior to embarking on the competing marks procedure.

We suspect that a reasonable practitioner should be able to anticipate reasonable rejections of this nature and if they are not reasonable, should be able to overcome them. I felt that the complaint reflected a basic laziness more than anything. One presumes that if there were no hiccups with trademark filing, one wouldn’t need trademark attorneys. There seems to be no problem biting the hand that feeds.

Another bone of contention raised was if the parties to a competing marks procedure are willing to coexist, why should the patent office decide to over-rule them? These type of questions are what Israelis refer to as kit-bag questions. The patent office never merely over-rules the parties. Occasionally, the parties will be over-ruled if the patent office adjudicator considers that an agreement reached is not in the public interest and leaves a likelihood of confusion or could create a cartel or otherwise impede fair competition. Where the parties are over-ruled that patent office gives reasons. If the party (parties) is (are) not satisfied, it (they) can appeal to the courts.

Discussing the event afterwards, one ex-employee told me that he found the discussion re formalities very boring. Another told me that he’d waited a long time for a meeting like this, to discuss the issues raised. In general, I got the impression that most participants were quite happy, and the trademark examiners told me that they found the opportunity to get feedback from the practitioners very worthwhile.

Regarding substantive changes to trademark law, I don’t think that many of the suggestions raised will be implemented. I suspect that if they were, those who raised the issues would then complain of having less work.

Regarding procedural issues, some suggestions will be implemented, and I suspect that putting faces to names, many practitioners will be more likely to pick up the phone to the Examiner to try to resolve issues, which may save time all round.

Apparently Dr Kfir Luzzatto took it upon himself to collate the questions from the profession, and is to be thanked for so doing. Appreciation is also extended to Dr Meir Noam of the Association of Israel Patent Attorneys and to the present commissioner Asa Kling for setting the event up, and to the trademark examiners for preparing for the event.


Israel Supreme Court Rules on Parallel Importing

November 19, 2014

Tommy Hilfiger

The Israel Supreme Court has issued a ruling concerning the rights and wrongs of parallel importing and related marketing and advertising. This is the first time that they have ruled on this issue.

The Supreme Court ruled that parallel importing is legitimate, as is marking the goods with the trademarks. The licensed importer or franchisee cannot prevent parallel importing, but it is important that the name of the company doing the parallel importing does not imply that the parallel importer has a relationship with the mark holder and has to actively take steps to make clear that they are not the licensed importer. The licensed importer does not have to guarantee or provide a service for the parallel imported goods and the parallel importer that the public are made aware that the parallel imported goods are not covered by the importer’s warranty and servicing obligations.

The Israel Supreme Court partially upheld the ruling of the Court of First Instance that the parallel importers had infringed the registered licensee’s trademark and were also guilty of passing off. This was due to the name of their business, not the parallel importing itself. The Supreme Court decreased both the damages award and the restrictions imposed by the Court of First Instance.

The Appellants, Elad Suissa and Importer Warehouse 42 LTD. imported clothing carrying the Tommy Hilfiger brand, despite not being the licensed importer registered in the Trademark Register and also not having any contractual relationship with the licensee. The Appellants purchased the goods abroad from legitimate suppliers in countries where the prices were lower than in Israel. They traded under the name ‘Importer’s Warehouse – Tommy Hilfiger’ and advertised themselves as selling premium bands at discounted prices. They operated a website www.tomm4less.co.il.

The licensed importer Sea & Shells LTD, together with Tommy Hilfiger Licensing LLC. Tommy Hilfiger USA INC. and Tommy Hilfiger Europe BV sued Elad Suissa and Importer Warehouse 42 LTD on  various grounds of unfair trade and trademark issues.

The Court of First Instance ruled that the parallel importers should pay 457,000 NIS in damages and issued a permanent injunction against them. The Appellants argued that they should not be restricted from parallel importing in circumstances where this is legal.

The Supreme Court partially accepted Appeal 7629/12 by the parallel importer, and rejected the appeal 8848/12 by Tommy Hilfiger.

The Ruling

The starting position is that parallel importing is legal. Parallel Importing is not trademark infringement and is not Unjust Enrichment by the Parallel Importer. However this does not mean to say that there are no restrictions on the parallel importer. The parallel importer is subject to trademark law, fair trading laws and the Law Against Unjust Enrichment.

In Pezachim, using the registered trademark in connection with legitimate goods carrying the mark was considered “True Use” under Section 47 of the Trademark Ordinance. In Toto Zahav, it was ruled that such a use of original goods is an infringement. The case-law of the District Court adopted tests from US case law: If the items cannot be identified without using the trademark it is legitimate to use the trademark. However, usage must be limited to that which is necessary to identify the goods as being genuine and no more, and there should be no indication that the retail outlet is sponsored by or affiliated to the mark holder. Toto Zahav did not relate to parallel importing and, in cases of parallel importing, the Toto Zahav ruling should be modified.

Parallel Imported genuine items do not fall under the guidelines of Toto Zahav. Their sale is not trademark infringement and the goods do not have to have been purchased directly from the rights owner. However, marketing activity relating to such goods may be considered trademark infringement. Servicing and maintenance services have to be recognized for the servicing laboratory to be able to use the registered trademark. Parallel imported goods are not subject to warranties and guarantees of the registered importer and parallel importer has to take care that it is clear that his parallel imported goods are not covered by such warrantees.

Passing Off requires a reputation of the rights holder, and, in addition to the mark owner, the legitimate importer or licensee may have rights in the brand and may be able to sue for passing off. The concept of ‘dilution’ does not apply to parallel importing and cannot be claimed by either the mark owner or the licensed importer. However, where the reputation is built on service and the like, sale of the goods by a parallel importer such that the service agreement does not apply, may be considered passing off.

In the present case, sale and publicity of the goods themselves and the website www.tomm4less.co.il are considered as being truthful. Using the company’s colours is also unlikely, in and of itself to cause confusion.

Trading under the name ‘Importer’s Warehouse – Tommy Hilfinger’ is considered trademark infringement of the rights of Tommy Hilfiger Licensing LLC. Tommy Hilfiger USA INC. and Tommy Hilfiger Europe BV.  This is not infringement of the rights of the licensed importer Sea & Shells LTD however, since they themselves do not have a reputation.

There is no additional element such as bad faith to warrant granting damages under the Law of Unjust Enrichment.

The Parallel Importer must cease to use the name ‘Importer’s Warehouse – Tommy Hilfinger’ and have to pay 100,000 Shekels as estimated damages for their infringing use and have to mention in their advertising that they are not a franchise or otherwise acting under the supervision of Tommy Hilfiger.

The costs awarded by the District Court are canceled and Tommy Hilfiger et al. have to pay 25,000 Shekels costs to the parallel importer.

7629/12 Appeal to Israel Supreme Court (ruling by Dalia Barak-Erez et al): Elad Suissa and Importer Warehouse 42 LTD vs. Sea & Shells LTD, Tommy Hilfiger Licensing LLC. Tommy Hilfiger USA INC. and Tommy Hilfiger Europe BV, 16 November 2014

 


Naomi Ragen Found Guilty of Plagiarism Again

November 17, 2014

Sacrifice   marriage made in heaven

On 11 November 2014, Judge Oded Shacham found Ms Naomi Ragen not guilty of Copyright infringement on a technicality, but nevertheless guilty of infringing the moral rights of another author in a book that she wrote that was ruled as plagiarizing a short story by the other author, a Ms Cynthia Rosengarten (now aged 82). The request for an injunction was denied. The damages awarded were 60,000 Shekels, which was rather less than the 2.5 million shekels requested in the statement of case.

Background

The plaintiff, Ms Cynthia Rosengarten published a short story entitled “A Marriage Made in Heaven” in an anthology of short stories written by various Hareidi (Ultra-Orthodox) women, that is titled: “Our Lives, An Anthology of Jewish Women’s Writing” which was published in 1991. The anthology was edited by Sara Shapiro.

Ms Rosengarten claims that the story is autobiographical and relates to the marriage match of her eldest son. The story is a 15 page personal account of her dealing with match-makers, and how, as a mother, she felt when a girl from Boro Park was suggested as a suitable match for her 18 year old son. On one hand she is aware of the need for her son to get married, but on the other hand, she considers all the potential brides inadequate. The story reflects reality in the Hassidic world.

Ms Rosengarten sued Ms Naomi Ragen and Keter Publishing LTD, claiming that Ragen’s best-seller “the Sacrifice of Tamar” which was published in 1997 includes elements from “A Marriage Made in Heaven” and infringes both commercial and moral rights therein. Ms Shapiro was mentioned as a formal plaintiff.

The Sacrifice of Tamar tells the story of Tamar Feingold, who grew up in an Ultra-Orthodox neighborhood of New York, and relates her internal conflicts with the community in which she lives.  Two years after getting married, Tamar Feingold is raped by a black (that is, African American – not Hareidi) rapist whilst staying with her sister. Later that night, Ms Feingold sleeps with her husband and hides the trauma she went through. She becomes pregnant and is unsure which is the father of the child. Chapters 1 to 22 of the book relate to the feelings of Tamar through the pregnancy, where eventually a white skinned child is born.

In Chapter 23, the son asks his mother to help him find a life match.  The son gets married and a year later his wife has a black skinned baby. The son accuses her of unfaithfulness and Tamar has to come clean about the rape. The son’s marriage dissolves and Tamar, the grandmother, adopts the grandson and leaves the Hareidi fold.

According to the Statement of case, Ms Ragen used parts of “A Marriage Made in Heaven” in Chapter 24 of her novel, thus violating the Copyright and Moral rights of the plaintiffs. They claimed damages and also requested an injunction.

Ruling

Because of the time-line, the ruling was given under the old Copyright Regulation of 1911 and not under the new Copyright Act 2008, but, considering the infringement as on-going, eventual damages took into account the statutory damage regimes under both law.

In the ruling there is a lot of discussion as to whether the copyright was actually transferred by Ms Rosengarten to Ms Shapiro and that it wasn’t transferred to the printing house. No assignment document was forthcoming. It was alluded to and was probably filed somewhere but was not produced.

Judge Shacham ruled that the copyright in “A Marriage Made in Heaven” belongs to Ms Shapiro and consequently the plaintiff Ms Rosengarten does not have grounds for financial Read the rest of this entry »


Wyeth’s Patent Term Extension for Bazedoxifene Cancelled Prior to ReExamination

November 10, 2014
Rocking the boat...

Rocking the boat…

There was an amendment to the Israel Patent Law earlier this year. This amendment (11th amendment) relates to patent term extensions. The amendment was announced, but did not go into immediate effect.

Wyeth filed a request to correct a mistake in the Patent Extension Order concerning Israel Patent Number 120701. The extension Order was given on 23 February 2014, and extends the basic patent for Bazedoxifene which, without the extension, would have lapsed on 18 April 2017.  The intention to grant an extension until 26 August 2019 was given in October 2013 and published back then. The calculation was based on the Law prior to the eleventh amendment.

On 18 September 2014, Wyeth submitted a request to correct the Extension Order to provide protection according to the regime after the eleventh amendment.

Section 16 of the Amendment states:

16(a) this Law will apply to Extension Order requests that are pending before the Commissioner of Patents on the day that this Law comes into effect, and for future requests for patent term extension.

Wyeth’s contention is that the amendment to the Law came into effect on 27 January 2014 and due to the publication for opposition purposes, the period for opposition finished on 31 January 2014, so, at the time the Law came into affect no Patent Term Extension had been granted and the request for patent term extension for IL 120701 must, therefore, be considered as pending at the time the amendment came into effect.

The amendment narrowed down the list of countries that could be relied upon for Israel to grant a corresponding extension. Instead of anywhere in Europe that grants an extension, only Italy, UK, Germany, Spain and France could be taken into account. Significantly, Japan was no longer considered a relevant country in regards to patent term extensions. Wyeth’s patent was extended on the basis of the extension of the corresponding Japanese patent. By ignoring Japan, a longer term could be requested.

There is an interesting twist here. In October 2013, the FDA issued approval for Bazedoxifene together with conjugated estrogens as Duavee. This fact was not taken into account in calculating the Patent term Extension and could act against Wyeth. The Commissioner ruled that it would be improper to apply some sections of the amendment and not others, and that the Israel Patent Office should consider the ramifications of this FDA approval as well. In consequence, the Commissioner did not amend the ruling, but rather canceled it as a wrongfully given bureaucratic decision. He ruled that the published patent term extension was null and void and that the Application would be subjected to accelerated re-examination under the amended Law with the ramifications, if any, of the FDA approval of Duavee also considered.

Various legal precedents were given to support this contention and the solution it offered. The Commissioner noted that Patent Term Extensions are not final and could be reconsidered, even previous to the eleventh amendment.  He related to previous rulings concerning Teva vs. Abbott, Neurim, Lundbeck vs. Unipharm and Roche.

In addition to being able to oppose any subsequent patent term extension, the cancellation of the existing patent term extension may also be opposed by third parties.

Ruling Concerning Patent term extension to IL 120701 to Wyeth, 3 November 2014.


Follow

Get every new post delivered to your Inbox.

Join 298 other followers