America Invents, and you can learn about it in Israel!

December 18, 2011

Bar Ilan university are hosting a full day conference on 4 January 2012 to debate the ramifications of the changes in the US Patent Law wrought by the America Invents Act.

To register, or to receive more details, please contact Dr Miriam Bitton:   miriam.bitton@mail.biu.ac.il

The event is sponsored by S.T. Colb and will be held in the Wohl Center, Hall 1 of the Bar Ilan Campus.

The program hasn’t been released yet, but apparently Judge Randall Rader the Chief Judge of the United States Court of Appeals for the Federal Circuit will be lecturing, so regardless of who else is presenting, the event will be worth attending.

COMMENTS

Two years ago, the dynamic Bitton-Colb duo gave us a conference titled, After Re Bilski Now What? which unfortunately took place several months before the Bilski decision was heard by the Supreme Court.  See  here. That conference, spread over two days, was characterized by a lot of vacuous waffle and prophecies that never materialized. We therefore applaud the decision to concentrate on recent historical (and perhaps historic) amendments to the US Law.

In January last year, S.T. Colb teamed up with Fish Richardson and held an event on patent litigation in the US. That event was again cosponsored, at least officially, by Bar Ilan.  For more details, see here.

We suspect that the refreshments at Bar Ilan will be less of a high standard, but lower than the fayre at the Hilton. Looking forwards.

Leave a Comment » | Academia, Intellectual Property, US, US Patent Office, USPTO | Permalink
Posted by Dr Michael Factor

Israel Judge Refuses Class Action Against Google Books

November 29, 2011

Google Books scans books and stores a searchable electronic copy on Internet accessible servers, making a short extract of 2-3 lines available to searchers, together with name of author, title, publisher and year of publication.

If the authors consent to take part in the project, the can allow a larger extract t be available and in return, a link to online suppliers of the book is provided.

Jonathan Bruner, the author of “What you see from there” filed a Class Action against Google Books, on behalf of Israeli Authors whose copyright was he considers infringed by this.

In her ruling, Judge Tamar Bazak Rappoport refused to allow this to be considered a Class Action. She considers the Law of Class Actions to restrict the procedure to trade related disputes where a supplier or vendor provides a service to a large group of people. In the current instance, this is not the scenario. Google considers the authors who work with them as partners. That as may be, those who do not join the program are not clients or customers.

Regardless of whether there is a case of Unjust Enrichment or Copyright infringement resulting from Google’s activity, following the Israel Supreme Court Precedent 3126/00 State of Israel vs. E.Sh.T. Project Management and Personnel LTD, 2003, the instances where a Class Action is appropriate is limited to vendor-customer type cases.

She threw out the request for the case to be considered a Class Action and ruled NIS 10,000 to Google.

Class Action Ruling11319-04-11 : Bruner vs. Google Inc., 23 November 2011, Judge Tamar Bazak Rappoport

5 Comments | Class Action, infringement, Intellectual Property, Internet, Israel, Israel Copyright, Israel Court Ruling, Israel IP | Permalink
Posted by Dr Michael Factor

Requesting Reconsideration of an Israel Patent Office Decision

November 21, 2011

Berik Design USA Inc. , and Greenstar Hong Kong Ltd.,  (“Opposers”) represented by JMB, Factor & Co. are opposingIsrael pending trademark Nos. 227959 and 227960 by No Fear International LTD, (“Applicant”) represented by Shlomo Cohen & Co.

The following interim ruling relates to a request by Applicant’s counsel to have a decision of the Patent Office Adjudicator reconsidered.

BACKGROUND

Shortly before the deadline for filing a response to the Opposition, the Applicant requested a two month extension to file their response and legal arguments against the Opposition , but the Patent Office granted one additional month only.

Claiming that the Opposers were uncooperative and that obtaining evidence from abroad was problematic, counsel for Applicant requested that this decision be reconsidered.

The Applicant did not provide JMB, Factor & Co. (the Opposers’ Counsel) with a copy of their request, as is customary.

The Adjudicator requested the Opposers’ respond to the Applicant’s request. This was particular difficult for the Opposers’ Counsel, since they had not been provided with a copy of the request. The Opposers’ Counsel spent many days attempting to obtain a copy of the request from the Patent Office, a task which proved to be difficult since the clerk handling the matter was on vacation at the time.

After finally obtaining the details of the request, JMB, Factor & Co., responded to it,  informing the Adjudicator that in principle, the Opposers’ do not oppose the Applicant’s request for an additional month’s extension. However, the Applicant’s counsel  had never contacted them to request such an extension. Furthermore, the Opposers’ Counsel requested the imposition of costs on the Applicant for the time spent in obtaining a copy of the request from the patent office and in responding to it..

The Ruling

According to the Adjudicator for Intellectual Property, Ms Yaara Shoshani Caspi, there is a list of instances where reconsideration of a ruling is legitimate, that is detailed in Appeal No. 1574/11 Strauss Marketing LTD. vs. Moshe Orman, 2011. In her opinion, the current situation does not fall into an appropriate category and thus the decision should not be reconsidered.

Nevertheless, Ms Caspi Shoshani went on to look at the specifics of the case, and noted that the counter-case should have been filed by 30 August 2011, but the request for an extension was only received on 4 September 2011, albeit dated 24 August 2011. The applicant claimed to have relied on a reminder letter from the patent office dated 14 July 2011, but there was a general letter from 31 March 2011 from the trademark department of the patent office to the effect that no reminders would be sent.

Consequently, the request for an extension was rejected and costs ofNIS1500 were awarded to the Opposers.

Following the ruling, the Applicant’s Counsel requested the Adjudicator to reconsider her decision regarding the extension and the amount of the damages.

The Applicant has since filed his response, a copy of which the Opposers’ have yet to receive. The Adjudicator has since ruled that the since the response has now been filed, the request for an extension is moot. Furthermore, the Arrbitrator has ruled that the level of the costs awarded shall not be amended.

Opposition to Israel TM 227959 and 227960, Berik Design USA INC. V. No Fear International LTD.

COMMENT

My brother Aharon, head of trademark department in our firm won this little skirmish, which is nice. Of more importance of course, is to win the opposition proceedings.

It is quite unreasonable for something to take 10 days to reach the patent office from a law firm that uses couriers, and in the age of faxes. Furthermore, regular mail shouldn’t take that long to arrive, and important documents sent by mail could be sent registered or express mail. I think Ms Shoshani Caspi’s ruling reflects this.

Leave a Comment » | Intellectual Property, Israel Patent Office Rulings, Israel Trademark, opposition, trademarks | Permalink
Posted by Dr Michael Factor

What is required to obtain actual and not estimated costs in a Patent Opposition?

November 20, 2011

Oval Magofim LTD, represented by Mati Barzam, successfully opposed Israel patent application No. 165760 to Alberto Lodolo.

After requesting and receiving one extension to file a response and counter-claims, the applicant filed for a second extension and was refused, and the application was thus dismissed.

The opposer filed for costs, and claimed NIS 50,000, arguing that the legal costs incurred were NIS 35,763.60, to which should be added a further NIS 15,000 for direct costs to the opposer who had to use their own staff to prepare evidence for the Statement of Case.

The lawyer’s invoices were appended to the request for costs, as was an affidavit from the CEO of the opposer who claimed that he or another worker had spent 100 hours in getting material together and in reviewing the opposition statement.

In ruling, Ms Y. Shoshani Caspi considered lawyer’s invoices labeled ‘for patent work’ insufficiently detailed to be clearly linked to this specific case and to explain how the sums reached were justified. Furthermore, the affidavit was also considered insufficiently detailed. One specific point Ms Y. Shoshani Caspi queried was that the CEO detailed reviewing the statement of case. Ms Y. Shoshani Caspi considered this as an additional safeguard but not strictly neccessary. She rejected the actual costs and estimated that NIS 15,000 were appropriate for the amount of work performed.

Costs in opposition to IL 165760 to Alberto Lodolo, opposed by Oval Magofim LTD., 19 September 2011.

COMMENT

Without seeing how much material was filed, it is difficult to estimate how much work went into it, but at a reasonable  IP lawyer’s rate of NIS 1000 an hour, one can assume that the cost of filing an opposition, which requires analyzing the application, reviewing prior art and writing an opposition will take time.

I suspect that the patent office simply weighs the material submitted, and am not sure that the estimated costs are fairer than the requested costs.  That said, the patent office is in the best position to directly compare different cases.

 

Leave a Comment » | Intellectual Property, Israel, Israel IP, Israel Patent, Israel Patent Office, Israel Patent Office Rulings, opposition | Permalink
Posted by Dr Michael Factor

How many lawyers does it take to cross examine a witness?

November 20, 2011

This isn’t a joke. Rafa Laboratories LTD. opposed patent number 129724 to Takeda Chemical Industries.

The then Deputy Commissioner allowed the applicant to cross-examine someone in Slovenia at the opposer’s expense.

The applicant, represented by S. T. Colb, presented the opposer with an itemized bill for NIS 76,449.70, for first class flights for two attorneys from Israel, Takeda’s Head of IP from the UK, and a further representative from Japan. In addition to the four first class tickets, the applicant incurred three night’s stay in Ljubljana and hired the services of a local lawyer.

The opposer thought that three representatives was quite adequate, and that they could fly tourist class. They considered both the Japanese representative and the local lawyer to be unnecessary, also the first night in Ljubljana, which was a full day before the evidence taking, to be excessive. They redid the maths assuming that business class travel was twice as expensive as tourist class, and paid NIS 25,398.41.

In response, Colb argued that the lawyers always travels first class and the first day was required to hold a meeting between the various lawyers, and doing this in Ljubljana was the cheapest option.

The present decision examines the claims of both sides and rules on what are reasonable costs.

The Decision

Ms Yaara Caspi Shoshani considers it the prerogative of the applicant to decide how many lawyers to send and whether the best person is to come from Japan or elsewhere, so found four representatives acceptable. Furthermore, she had no problem with the applicant engaging a local attorney as the examination had to be performed in accordance with local civil procedure. However, regardless of whether the attorneys in question generally travel business or tourist class, she did not see why the opposer should pay for the luxury of business class. As to the first night in the hotel, she accepted that meeting in Ljubljana was cost-effective for the applicant but did not see why the opposer should pay for the expenses incurred by the applicant in preliminary meetings.

She halved the fee asked for on behalf of the Japanese representative, added a taxi fare and a night in Paris for him (no direct flights), converted everything into New Israel Shekels at the exchange rate at the time of the hearing and came to the conclusion that a further NIS 29,935.35 was in order.

The main case-law she based her reasoning on, was Bagatz 891/05 Tnuva vs. Israel Department of trade and Industry,  P. D.  S(1) 600.

The Ruling: Costs re Takeda Chemical Industries vs. Rafa Laboratories Concerning Israel Patent No. 129724, 20 September 2011.

Comments

IL 129724 relates to crystaline structures of Indazole.

I would recomend any attorney having reason to go to Ljubliana to visit Bled. It’s stunningly beautiful and seems a pefect backdrop for a business picnic. I can understand why Rafa feel bled by this, but quite frankly the sums of money to be made if a commercially significant pharmaceutical patent is successfully opposed are very significant.

Unfortunately, when I went with wife and kids for a week’s self catering holiday in Slovenia, we went tourist class and I couldn’t write it off as a business expense. Still it’s nice to know that one day I may need to go there on IP related business.

Leave a Comment » | drugs, Intellectual Property, IPO, Israel, Israel IP, Israel Patent Office, Israel Patent Office Rulings, opposition, pharmaceuticals, pharmaceuticals and Biotechnology | Permalink
Posted by Dr Michael Factor

In Israel Trademarks, should the list of goods in English prevail?

November 14, 2011

When filing trademark applications in Israel, it is necessary to specify the class of goods and lists of articles covered in Hebrew and English.

For trademarks filed by applicants from abroad, the list fo goods provided by the applicant is typically in English, and the Israel representative has to find suitable translations.

For example, I remember helping to translate a trademark for a list of goods that included, anoraks, parkas and duffel coats. All these are hooded coats. Anoraks are generally fabricated from waterproof synthetic material and have quilted linings and are zippered. Parkas are generally dark blue with orange linings and stiffer hood, and tend to have both zippers and buttons or press studs. Duffle coats are typically made from wool, have toggles instead of conventional round buttons and are best described as the type of hooded coat that Paddington Bear wore.

One of my Turkish clients makes paper goods and among the list of disposable articles for one of their marks, was the word napkin. Now in the UK, a paper napkin is also referred to as a serviette, and is placed on the dining table and used to wipe one’s fingers and mouth. I understand that in the US, a napkin would not be put on the dining table. Not knowing what the company manufactured or might manufacture in future, I suggested that we included in the list of goods: disposable paper diapers, sanitary napkins and serviettes, and the client concurred. In that instance, there were no similar marks in the class, so wide protection was possible.

Where the trademark is for engineering components or technical goods, the problem is compounded since many lawyers who handle trademark matters have little technical competence.

To overcome this sort of confusion, the practice of adding a notice has developed, that in case of discrepancy between the English and Hebrew list of goods, the English list of goods prevails.

In Circular 2011/07, the Israel Commissioner of Patents and Trademarks, Adv. Asa Kling, has put an end to this practice. Such notices will no longer be allowed.

It makes perfect sense that in Israel, the Hebrew list of goods prevails. Israel judges are expected to know Hebrew, and may have less than adequate English. On the other hand, why should trademark owners lose their rights due to mistakes by attorneys that may be difficult to avoid, since some nouns that represent articles in English simply don’t have accurate translations?

In practice, since Israel ascended to the Madrid Protocol last year, most applications originating abroad are filed under the protocol and the list of goods is filed in English only. This avoids the need to translate the list of goods into Hebrew altogether.

On a positive note, the issuance of this circular may indicate that the trademark department is now running normally after the tragic loss of Ms Nurit Maoz, who was brutally murdered.

We note that in the Wrangler case, the court decided that there was trademark protection for a W on the back pocket of jeans, where Wrangler had registered the mark for shirts and overalls only, and not for trousers/pants/jeans . Go figure.

Time will tell if as a result of this circular, there will be more or less ambiguity regarding the list of goods protected by a mark.

Leave a Comment » | Intellectual Property, IPO, Israel, Israel Trademark, trademarks | Permalink
Posted by Dr Michael Factor

Can one have IP rights such as copyright in a syllabus?

November 13, 2011

“It's fun to charter an accountant, and sail the wide accountant sea!”

The Israel courts recently had to address the issue of IP rights in a syllabus.

Ms Orli Tal claimed to have created a pedagogic program for teaching 4th year accountancy that she alleged was purloined by the Israel Open University, and sued the university, the Head of the MBA program and various other staff members for NIS 3,172,000.

Ms Tal is a lawyer and accountant who teaches tax law and accountancy.  At the time relevant to her filing suit, she worked for the Legal Dept. of the Israel Tax Office.

Apparently, a degree course in accountancy in Israel is a 3 year program, after which, students can study a fourth year whilst obtaining work experience as a trainee accountant.

At a private function, Ms Tal set up a meeting with the director of the Open University to discuss her study program. She subsequently met the other directors and there was an exchange of study materials, followed by a couple more meetings, and a verbal declaration to get married, understood to mean that the sides would work together.

However, the collaboration didn’t last and Ms Tal sued, claiming that her program was being used without accreditation and in contravention of her rights.

The grounds for legal recompense include:

  • Unjust Enrichment
  • breach of entrepreneurial Trust
  • Breach of Statutory Obligation
  • Breach of Contract
  • Malpractice
  • Acting in Gross Bad Faith
  • Theft of Trade Secret
  • Passing off
  • Physical and Moral Copyright Infringement

The university claims to have been working on a fourth year syllabus prior to the sides meeting, and claims to have met with the Accountant’s Guild some five months prior to the first meeting between Ms Tal and the director of the Open University. The university met with Ms Tal to assess whether she could be incorporated into the program as a lecturer, since she had relevant experience, but due to the differences between her expectations and theirs, no deal was reached. They deny acting in bad faith.

Since the program Ms Tal suggested was built on the elements of low registration fee and a mixture of remote learning and frontal teaching, according to the university, there was nothing new in the approach when compared to what the Open University traditionally did, and therefore there was no trade secret, nor any other IP rights in her program.

According to the defendants, Ms Tal neither proved that her hourly charge of $200 was accepted by them, nor that she had spent the number of hours she claimed to have put into developing her program. They dismissed the alleged damages of NIS 3,172,000 as grossly inflated.

Finally, since the individuals named in the statement of case where working for the Open University and acted in official capacities, they alleged that their being named as co-defendants was inappropriate.

In analyzing the case, Judge Shaul Meinheim considered each legal grounds separately.

COPYRIGHT – noting that the plaintiff had referred to her idea as a pedagogic model and as an idea, Judge Meinheim noted that the first wasn’t a known copyright category and didn’t fit easily into any of the categories. He went on to note that section 5 of the copyright ordinance states quite clearly that there is no copyright in ideas per se. Finding that the model wasn’t fixed in a medium on plaintiff’s testimony, he dismissed the charges. He noted that even if Ms Tal indeed spent 1500 hours researching the program, there was no program presented that could be considered as being a creation protected by copyright.

TRADE SECRET – Judge Meinheim was unable to isolate the alleged trade secret that was the property of Ms Tal prior to being stolen by the university, and therefore dismissed the charges.

BREACH OF CONTRACT – The only document produced was a personal memo by the plaintiff of what was discussed at the first meeting. Judge Meinheim dismissed this as insufficient to indicate that the sides had reached a binding contractual arrangement.

BAD FAITH – It appears that the university negotiated with the plaintiff and no agreement was reached. This is not indicative of bad faith.

UNJUST ENRICHMENT – No evidence was produced that the University made profit from Ms Tal’s ideas.

ADDITIONAL DEFENDANTS – Here again, the judge could see no justification for the various personnel affiliated with he university to be included in the case.

DAMAGES – Even were he to have accepted legitimate grounds for compensation, the sums claimed were considered grossly exaggerated.

The charges were dismissed and costs of NIS 200,000 were awarded against the plaintiff.

T.A. 4130-10-07 Tal vs. Open University and Others., 11 October 2011 Tel Aviv District  Court, Judge Haim Meinheim.

COMMENT

In a recent article I discussed a conference hosted by WIPO and ONO on traditional knowledge. When the idea first came up, Dr Shlomit Yanitzky Ravid who was on sabbatical, invited me to collaborate on the program, expecting this to help create a rigorous conference that would attract the profession.

Although not being particularly positive regarding traditional knowledge, I spent about a week making inquiries and putting together ideas which were presented to ONO and WIPO.

WIPO have strict rules on working with the private sector and they decided that JMB, Factor & Co. couldn’t co-host, nor could I present a lecture.  We decided not to spend any more time on the program and cut our losses. The program that eventually took place did have several elements that I can take credit for, and Dr Shlomit Yanitzky Ravid actually acknowledged the fact on the second day to the participants.

I imagine that Ms Tal had some legitimate grievances and from her perspective, and no doubt she felt that her ideas were being misappropriated. I can understand how Ms Tal felt. Nevertheless, going to court is not generally a solution. As a lawyer she should have known that she had a very weak case and little evidence. I suspect that this decision won’t do her teaching career any good, and will close doors and burn bridges.

One wonders why the lawyer representing her, Calderon, a well-known IP practitioner, took the case.

2 Comments | Academia, Intellectual Property, Israel Court Ruling, Israel IP, Uncategorized | Permalink
Posted by Dr Michael Factor

Copyright in Photographs from Old Newspapers Shown in History Programs

October 30, 2011

Shmuel Rachmani is a photographer who was affiliated with the Ma’ariv newspaper. Some of the time he was a freelance photographer and some of the time he was an employee. Rachmani’s contract with Ma’ariv left the copyright in all the photos with him.

In a documentary series called “This week previously,” The Israel News Company Ltd. related to important events that had occurred in the same seven-day period in previous years. Included in their coverage were images from the archives of the Ma’ariv newspaper at Bet Ariela.

Rachmani claimed copyright in 11 such images, of which 10 credited the archives rather than him.

The TV channel claimed the defences of no copyright in images of events,  and that where a newspaper has cropped an image, the copyright is lost. They also claimed defences of fair use, education and newspaper exception and incidental inclusion of the images in the program.

Judge Arnon Darel dismissed the claim of no copyright outright, and also the cropped image argument.

Having established that there was copyright in the image, Judge Darel would have contemplated the various fair use arguments if the identity of the photographer had been acknowledged, thereby preserving his moral right, but ruled that the channel could and should have clarified and acknowledged the identity of the photographer. Since they didn’t he ruled 7 separate counts of copyright infringement, ruling NIS 15,000 a time, as a compromise between the minimum and maximum statutory damages under the old law, and a further NIS 20,000 for moral rights.

The 7 counts were arrived at by dismissing one case where the identity of the photographer was acknowledged and treating two cases where more than one photograph of the same event was shown as being single infringements.

He went on to rule NIS 25,000 legal costs.

The Case: T.A. 7036/09 Rachmani vs. The News Company LTD., Judge Arnon Darel, Jerusalem Magistrate’s Court, 9 October 2011.

Leave a Comment » | Copyright, Intellectual Property, Israel, Israel Copyright, Israel Court Ruling | Permalink
Posted by Dr Michael Factor

Health Club Wars

October 30, 2011

Hadas Guvrin is a former aerobics champion and trainer of physical trainers. Now having reached the age of 40 she runs a couple of fitness clubs called PhysiKal (Kal mean easy in Hebrew) in the Hod Hasharon and Ramat Gan regions. The clubs have some 30,000 members.

A second fitness club called Switch, based in Netanya used her picture to promote their club. The photo was run in 4 or 5 editions of the local paper and one street hoarding.  Guvrin and PhysiKal sent a cease and desist letter and requested that Switch stopped using the picture and pay NIS 590,000 damages.

Switch took the picture down immediately and agreed to pay statutory damages of NIS 20,000 for copyright infringement.

A year later, Guvrin and PhysiKal sued Switch and owners Shermeister and Frankel for copyright infringement, moral rights infringement,  unjust enrichment, passing off, and damage to Guvrin’s privacy. They also requested a public apology from the defendants and an injunction against further usage of the picture.

Judge Amiram Binyamini accepted that there was copyright infringement, but ruled that the advertising campaign should be considered as a single incident and awarded maximum statutory damages of NIS 20,000 under the Old Law (pre 2007). He accepted that the copyright in the picture was indeed owned by the client, i.e. the fitness club, but ruled that the moral rights were owned by photographer who wasn’t a plaintiff, therefore dismissed the moral rights claim.

As to the tort of Passing Off, although damages of up to NIS 100,000 could be awarded, Judge Binyamini ruled that the plaintiff was entitled to damages under either Copyright Infringement or Passing Off, but not both. In view of the short time period that the campaign ran and the different geographical location of the two clubs,  he saw no reason to increase the damages for Passing Off beyond the NIS 20,000 already awarded for Copyright Infringement.

As to Unjust Enrichment, Binyamini ruled that the plaintiffs had failed to show that the defendants had attracted members as a result of the activity. At best, they had saved themselves the cost of a stock photo under terms of non-exclusive use, which was a saving of perhaps tens of dollars, and thus negligible in light of the NIS 20,000 already awarded.

Since Hadas Guvrin had used her picture to promote fitness clubs herself, privacy wasn’t an issue either.

As four years had passed since the infringement, Judge Binyamini declined to order a public apology. He also felt the permanent injunction was unneccessary since the defendants had stopped using the picture immediately, and considered it requested merely to send the case to the District Court, but saw no reason not to issue it.

He noted that the defendants had offered NIS 20,000 at the outset, and taken down the picture immediately, so there was really no reason for the case to go to court. Furthermore, the defendants had offered to allow the case to be decided under Section 79a of the civil procedures, without evidence being heard, but the plaintiffs had insisted otherwise. Nevertheless, since the defendants had offered some fairly ridiculous defences as to why there was no copyright infringement and had insulted Ms Guvrin in one of the newspapers, he awarded a further NIS 10,000 legal fees.

the case: T. A. 1637/08 Hadas Guvrin and PhysiKal Events LTD. vs. Switch Fitness Club, Roei Shreimester and Israel Frankel before Judge Dr Amiram Binyamini, Tel Aviv District Court, 9 October 2011.

COMMENT

This seems to be a balanced ruling and Judge Binyamini is correct, the case was a waste of the court’s time. With a lot of daily commuters from Netanya to Ramat Gan, I am not convinced that the different geographical locations is important, but the judge is correct, that there was no evidence of actual damage.

Leave a Comment » | Copyright, Intellectual Property, Israel, Israel Copyright, Israel Court Ruling, Israel IP, passing off | Tagged: | Permalink
Posted by Dr Michael Factor

Israel Commissioner Meets Representatives of the Professional Organizations

October 27, 2011

Following a practice initiated by his predecessor, Commissioner of Patents and Trademarks, Assa Kling, met with representatives of the Israel Association of Patent Attorneys, the Israel Branch of the AIPPI, the IP group of the Israel Bar, the Licensing Executive Society (LES) and the International Federation of Intellectual Property Attorneys (FICPI) in a round table discussion.

Several issues were dealt with and minutes of the meeting  were made available by Adv. Tal Band, the head of the AIPPI. This reprot is based on those minutes.

Appropriately, the tragic and sudden loss  of the Head of the Trademark Department, the late Ms Nurit Maoz was the first issue raised. Her achievements were acknowledged and patience was requested from the profession for the invitable delays that have and will occur until the department is able to reorganize itself and move forward.

I discovered that the Israel Association of Patent Attorneys is no longer headed by Ms Michal Hackmey alone, but now has a co-chairperson, Ronny Shutrut. Despite being a member of good standing in the organization, I didn’t hear about this decision from the organization itself. His appointment doesn’t seem to have been an election. At the last general election, several of the large firms voted on behalf of all workers by proxy, despite there being nothing in the constitution to allow this, and despite those voting in absentia not knowing who would be standing for office. There was, however, a facade of democracy. this appointment seems to have been made without even directly informing the members, which is less than satisfactory.

Another unsatisfactory aspect of this is that both co-chairpeople work for the same firm. Funnily enough, the chairperson of the FICPI (Ina Pugasch) is a further employee of the Reinhold Cohn IP group.

We assume that RCIP, as Israel’s largest IP practice (excluding the patent office and TEVA) is big enough to take care of its interests. Since the Commissioner himself, worked there until his appointment earlier this year, I suspect that the firm is reasonably capable of getting his ear if necessary.

The question is whether the present set up serves the interests of practitioners not working for RCIP, including the very large number of sole-practitioners whose needs and perhaps that of their client base may be very different to that of the Reinhold Cohen group.

Ms Michal Hackmey did request that members submit issues to her, for raising at these important meetings. Unfortunately, however, her priorities in deciding which issues to raise, will invariably reflect her perspective and practice.  I raised two issues with her and asked them to be brought up. I requested that the current practice of examination of independent claims only be raised as it extends prosecution and incurs unneccessary expense to clients. I also raised the issue of apparent illegality of the committees that orally examine candidate patent attorneys.  The first issue was apparently not raised but the second issue was discussed, but after the furore raised in responses to this blog and the like, presumably could not be ignored.

If all the people representing the private sector at these round tables come from 2 or 3 large firms, does this promote the interests of the profession as a whole? Not sure.  We wonder, therefore, whether the roundtable really serves its purpose to provide a channel of communication between the profession (as a whole), and the Patent Office.

One interesting insight was that the Commissioner of Patents noted that various issues including amending the law regarding examining patent attorneys was not within his bailiwick and he had no authority in such matters. We note that this more humble approach contrasts to that taken by his predecessor, who sometimes exceeded his authority when trying to straighten out archaic practices. Substantively, if not formally, Dr Noam’s reforms were generally both correct and filled needs, despite the rap he took from the Knesset committee for exceeding his authority and ignoring the letter of the law.

It seems from the sentiments reported in the summary of this first round table, that Commissioner Kling will be conservative in how he pursues his reforms.

2 Comments | Intellectual Property, IPO, Israel IP, Israel Patent, Israel Patent Office, Israel Trademark, Uncategorized | Permalink
Posted by Dr Michael Factor

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