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

Copyright in photographic images reproduced on websites – fair use

October 6, 2011

Roman Kriman is an accomplished photographer with some 5000 images on the Jerusalem Shot website here.

Newsru is a Russian language news portal that is apparently the most popular Russian news website in Israel. The website is to be found here.

Kriman’s site indicates that his images may be used free of charge, but that the photographer must be acknowledged and a link from the picture is required to lead to the Jerusalem shot website.

Kriman sued Newsru for copyright infringement for failing to comply with the licensing conditions. Kriman requested 200,000 Shekels.

I assume the sum sued for covers both statutory damages for copyright infringement and for moral rights infringement. It is not clear if this is for multiple statutory damages under the old law or for a single offence under the new copyright law, but the ruling does relate to some dozen cases and applies the old copyright law despite apparently being filed in 2010 and relating to recent events.

That as may be, in her ruling Judge Chana Yinon of the Jerusalem Magistrate’s Court applied the old copyright law, accepted that there is copyright in original photographic images but was satisfied that the defendant attempted to comply with the licensing terms by crediting images in a page of credits, and that clicking on an image opened a hyperlink to source information. She considered the licensing terms sufficiently unclear that she found this practice a genuine attempt to comply.

Where images were wrongfully attributed to sources from which Newru had obtained them, but not to the photographer, she found Newsru not at fault. In this regard, during cross-examination, Kriman indicated that in his opinion it was wrong to reproduce an image without knowing and attributing the original source, whereas the judge preferred the defendant’s understanding that third parties can reproduce an unattributed image.

Somewhat confusingly, Judge Yinon cited Civil Appeal 2312/02 Druk vs. Danziger and also Tony Greenman’s work, Copyright in the Digital Age, to indicate that it is not enough to not know who the rights owner is, if the defendant has reason to believe that there is copyright in an image.

Deciding that there was no damage, the case was dismissed.

T.A. 10587-01-10 Roman Kriman vs. Newsru LTD. before Judge Chana Yinon, 12 September 2011

COMMENTS

I think Newsru’s behavior appears to be within the ambit of fair use. There is a problem though. Any photographic image of an identifiable person or scene or that shows clothes or cars or other items that clearly date the picture within the past 50 years, or indeed any colour photographic image is copyright protected unless the photographer actively puts it in the public domain. However, in such circumstances it is impossible to identify the rights owner. Internet sites, particularly non-commercial ones should be able to use images for illustrative purposes, acknowledging the rights owner if they know it, and certainly should not remove copyright notices. Where an image is not protected with a watermark or similar, one often cannot tell who owns the copyright and the image is therefore effectively in the public domain. I don’t think it is reasonable to prevent reproduction under such circumstances.

It seems to me that correct policy is to allow non-commercial websites to reproduce such content but to require them to take down the images if requested to do so. giving statutory damages without proof of damage seems unreasonable.

Nevertheless, the judge cites case-law and an Israel authority to the effect that one may have grounds to assume that an image is copyright protected even where the owner is not identified. It seems to me that any colour photo must be copyright protected since the law does not require a copyright notice. But this is not in the public interest. It does not serve the photographer or the wider public.  The boundaries of fair use are not clear.

I’ve discussed my use of images on this blog with world leading IP experts who concur that it is fair use. Is someone with a claim to copyright in an image requests that I remove a photograph or other image, I will do so immediately. Eventually technology may result in images being readily traceable so permission from the rights holder can be requested. We are not there yet. Copyright Law does seem to need an overhaul.

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

Generic Body Warmers

September 4, 2011

S.P.B. Equipment LTD and T.T.L.M. Systems (Israel) LTD, both owned by Shai Popper supplied chemical body warmer packages to the Israel Defense Forces (IDF) and to private customers through survival and camping stores.

The packages have a specific shape, are coloured yellow and show instructions for use and various warnings in Hebrew and English. They also include a Use By Date.

The packages are manufactured in by Tianjin Comfort in China where they are sold as Body Warmers. Popper, however, sells these devices as High Quality Body Warmers.

Apparently, over a 10 year period, during which Popper had a significant market share if not an absolute monopoly, Popper sold some 5,000,000 units.

EliKal LTD. was created by a Mr Eli Even-Chen in 2005 after Even-Chen served as Head of Logistics and Equipment of the IDF over the years 2002 to 2004.

After several failed attempts, EliKal succeeded in winning the army tender.

EliKal’s body warmers were also sold as High Quality Body Warmers, had the same shape, were coloured yellow and had very similar texts printed on them. Furthermore, EliKal used a similar website with similar content to that of Popper’s companies, to advertise his products.

Popper sued, claiming passing off, unjust enrichment, famous mark infringement and copyright infringement, claiming statutory damages of NIS 100,000 and absolute damages of a similar sum.

In analyzing the two cases, Judge Avraham Yaakov noted that the general issue of to what extent suppliers had rights in markets they were dominant and where fair competition allows others to compete. Essentially the issue was one of where lied the public interest. He went on to point out that one could ask for statutory damages or actual damages, but not both in tandem.

Somewhat confusingly, Yaakov rigorously applied the triple test, and related to the sounds of the two names, as well as to the appearance of the products. Ruling that High Quality Body Warmer was simply a laudatory version of Body Warmer, who rejected the complainants allegations that he had somehow acquired rights in the product name through good will and reputation. However, the bottom line was that the term High Quality Body Warmer was simply a laudatory version of Body Warmer, and the shape of the article was not unique to the complainant, since the product was available from Chinese suppliers as an off-the-shelf product.

Since the IDF knew exactly who they purchased goods from, at least as far as the army was concerned, there was no case of passing off to answer for. Regarding the private market, the complainant stated having some 1,000 regular clients, but did not substantiate this claim, so the charges of passing off were also rejected.

Judge Yaakov went on to rule that despite the close similarity in instructions and warnings printed on the two packages, the Hebrew text was largely dictated by the army mil. spec. and the English language version was largely supplied by the manufacturer. For such products, the scope for creativity in instructions and warnings was limited. Consequently, Popper did not have copyright in the instructions.

Judge Yaakov also accepted the argument that the colour yellow was considered a warm colour and was widely used in packaging for products such as matches, lighter fluid and the like.

Having rejected all claims regarding the product itself, Judge Yaakov then considered the websites and, since the defendants site was clearly based on that of the complainant, with similar text, including some creative uses of the packages such as keeping animals warm in transit, he ruled copyright infringement and awarded NIS 70,000 out of the maximum discretionary NIS 100,000 statutory damages and a further NIS 20,000 in costs.

T.A. 15307-11-09 SPB Equipment et al. vs. Elikal LTD. before Judge Abraham Yaakov, 26 August 2011.

COMMENT

When analyzing the different elements like colour, text, name, etc. individually, one comes to the conclusion that Judge Yaakov is correct. However, we note that following the A.Sh.I.R. ruling by the Supreme Court, it is clear that in lieu of other grounds provided by IP legislation, Israel case-law provides the possibility of seeking redress on grounds of Unjust Enrichment, at least where a product design is copied. What is required is some additional element indicating bad faith. Regular readers will no doubt be aware that I am not a great fan of this doctrine, but it is, nevertheless, good case-law which is supposed to be binding on lower courts.

In this instance, the defendant copied the trade dress, including colour, shape and the name of the product. The copying of the website is further indicative that the defendant was copying Popper’s product.

Although the body warmer is a product made in China, it is not generic in the sense that potatoes or plain tee-shirts are generic. There is a peculiarity in Israel’s outdated design law (Patent and Design Ordinance 1925) which requires absolute local novelty to register a design in Israel. It is therefore possible that the product design could have been registered by Popper.  I therefore wonder if the clear indications of EliKal targeting Popper’s market with an identical product in identical packaging shouldn’t be considered unjust enrichment? Even-Chen’s winning the army tender deserves a second look as well. In principle, as a tax-payer, I am in favour of the army purchasing identical products from the cheapest supplier. Did this happen here? I suspect that Even-Chen had extremely good contacts with the decision makers…

Presumably, once damages are awarded for copyright in this specific case,  the point is moot. Nevertheless, it seems to me that the courts are moving away from A.Sh.I.R. and favour free market competition which I see is a good thing.

This decision does illustrate the importance of distinctive names and packaging schemes to develop a reputation for a product. It also indicates that there is no protection for market share or importer’s rights. None of this should be surprising, but we constantly meet clients who want to patent a device they’ve seen abroad that they want to import into Israel, and descriptive and laudatory names are only too common.

The decision relates to a temporary injunction regarding the identical coloured product that was apparently infringed, and this case was firstly wrongly filed in the Magistrate’s Court.

We note that body warmers have been required by Israel’s generals since time immemorial. See Kings I 1:1-3.

Leave a Comment » | Copyright, design, Fair Use, famous marks, infringement, Intellectual Property, Internet, Israel Copyright, Israel Court Ruling, israel design ruling, Israel IP, trademarks | Permalink
Posted by Dr Michael Factor

Can ISPs be Held Guilty of Contributory Copyright Infringement for Linking to Bootleg Movies?

August 22, 2011

Recently, in a case relating to copied textbooks supplied by a student society, the Israel Supreme Court recognized, i.e. legislated by case-law, the doctrine of contributory copyright infringement. In my posting on that decision, See http://blog.ipfactor.co.il/2011/07/04/contributory-copyright-infringement-in-israel/ I predicted that the ruling would have ramifications for Internet service providers, and the predicted ruling has not been long coming.

The Association for Protecting Cinematographic Creations (1993) which represents 20th Century Fox, Disney, Warner, Paramount, Dream Works et al. sued Rotternet Ltd. claiming that forums on Rotter.net provided links to movies that were copyright protected, thereby aiding and abetting their downloading.

Rotternet argued that “everyone does it” and that they removed any link or infringing copy if specifically asked to by the rights owner, but were under no obligation to police their sites.

The complainants argued that the removal on request provision was only effective against innocent acts of infringement but totally ineffective against wholesale intentional actions.

Judge Ofer Grosskopf noted that although there had been some Knesset bills relating to the culpability or otherwise of ISPs, these were never passed by the legislature and thus the issue remains open to judicial ruling, and he has a duty to rule on it. In a well-reasoned argument, he has dismissed the charges and ruled that supporting and displaying lists of links to movies was not in and of itself a culpable act of infringement and that so long as the internet service provider (ISP) had a ‘remove if requested to’ policy, they were not culpable for acts of infringement resulting from such links, so long as the sites were not dedicated to making pirate films available.

Movies are copyright protected for 70 years. Making movies available for downloading without the rights holder’s permission is copyright infringement. The movie must be hosted before it can be linked to. However, since films can be uploaded and stored anywhere, it is the internet service providers (ISPs) which link to the pirate films that provide a more effective target to sue to prevent such linking and thereby to minimize downloading. Despite enabling infringement by facilitating downloading, the linking to pirate films is not infringement per se. and the ISP is not responsible.

The wounded parties can request individual links to be removed and can attack the sites hosting the films. They can also take action against those uploading pirate videos. The service providers are, however, not legally responsible.

The decision relates to the relevant Israeli case-law and the big cases abroad, such as Perfect 10 vs. Google, etc.

Notably, at the beginning of the ruling there seems to be an implication that the act of downloading pirate movies is infringing. Towards the end of the reading it appears that Judge Grosskopf’s position on this issue has changed and downloading without making a copy, i.e. streaming and watching directly is not infringing.

Grosskopf congratulated Rotternet on providing a spirited defense in this matter, which involves other internet service providers and is an important matter of principle and awarded them NIS 50,000 in costs.

T.A. 567-08-09 A. L. I. S. – the Association for Protecting Cinematographic Creations (1993) vs. Rotter.net Ltd. by Judge Ofer Grosskopf, 8 August 2011.

COMMENTS

An interesting defense that is clearly not a legal defence but nevertheless cannot be rejected out of hand, is that “everybody else does it”. There are also some other statements in the ruling that appear correct, if largely irrelevant to the issue. For example, creating a link is not creating a work of literature that is copyright protectable.

This ruling may have international ramifications as the US is demanding that Israel does make ISPs culpable. This, together with Israel’s position on patent term extensions are the main reasons for Israel appearing in the Watch List of the Special 301 Report.

One issue of interest is that Rotternet provides internet forums for the ‘religious’, i.e. halakhically observant community. If linking to movies is not copyright infringement but nevertheless enables the free dissemination of movies without compensating the rights holders and is thus morally reprehensible, shouldn’t the self-described religious strive for higher than minimum standards?   Perhaps rotter is a good name…

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

Israel and US Patent Offices Announce a Superhighway – But so what???

June 25, 2011

I read in the weekend edition of Israel’s Mekor Rishon newspaper that the USPTO and the IPO have announced a super-highway, designed to streamline patent examination. The author of the article,  Ori Israel Paz, informs us that the wait between filing and issuance of Israel patents is notoriously long and that this initiative will make a difference.

Not for the first time, the journalist responsible, has taken a press release from the patent office at face value. Sorry to sound like an epicurean, Doubting Thomas, agnostic, or plain cynic, but I don’t believe a word of it.

Here’s why:

In Israel, Section 18 of the Patent Law requires applicants to submit citations and search reports from other patent offices in a timely manner from when a Notice of Imminent Examination issues, until allowance. The USPTO examination is open to the public over the Internet from 18 months from priority. The Examiners can and do check up what is happening in the US.

Under section 17c of the Israel patent law, once a US patent issues, an applicant in Israel can request allowance on the basis of the US patent, unless there some bar, such as the US patent claiming method of therapeutic treatment or relating to something that was documented in a publication within the grace period of a year prior to first filing that exists in the US but not in Israel.

In order to comply with WIPO requirements as an International search Authority, the Israel Patent Office has been recruiting examiners at an accelerated pace to have 100 examiners on their records.  There are about 7000 applications filed in Israel annually and more than half are allowed under Section 17c, without substantive examination. This means that there are more than enough resources for the Israel Patent Office to examine applications in a timely fashion and on the whole it does.  Backlogs have dropped in all technologies.

In contrast, the USPTO is in a mess with an enormous backlog, but the entire Israel Patent Office staff won’t make much of a difference. Under current Israel Law I don’t see how the Israel patent office can share submissions made by applicants before the end of the examination process when the granted patent is made available for opposition purposes, as the application and file wrapper are not available for inspection until then. Additionally, since the examination documentation that is sent back and forth between the examiner and the applicant’s representative are in Hebrew, one wonders how useful access to the Israel patent prosecution file will be to most US Examiners.

2 Comments | Intellectual Property, Internet, Israel, Israel Patent Office, Patents, US Patent Office, USPTO, WIPO | Permalink
Posted by Dr Michael Factor

Rav Aviner Sues aviner.net for trademark infringement and damage to his Intellectual Property

April 5, 2011

Rav Shlomo Aviner is a somewhat controversial Rabbi, living in Bet El. Despite me living only a few kilometers from him, I’ve never met him, but have heard him speak and read some of his opinions and rulings and don’t like them much. That means to say, that I have different core values from him and don’t see him as my Hallachic authority or spiritual guide. The same may be said about many other well-known Rabbis and public figures. I think that there is a range of hallachically acceptable practices, and there is sometimes argument for the sake of Heaven. I have no reason to believe that Rav Aviner is not sincere, and would be wary of disqualifying hallachically observant rabbis from being Rabbis or from ruling on Jewish law, merely because I disagree with them. In the marketplace of ideas, I simply don’t follow them.

One of his more recent indications of courageous outspokenness / poor judgement was coming out in favour of Moshe Katzav, the former President of Israel who was found guilty of rape and sentenced to 7 years. Despite having reservations myself regarding the Israeli Law and trial in this matter, I have no idea what happened between Katzav and Aleph, and at least the judges have heard and weighed evidence. I find it difficult to see how they can eliminate reasonable doubt though. Both employer-worker interactions and personal intimate relationships provide room for missunderstandings and different expectations. I am not sure that Rav Aviner has more knowledge than the rest of us in this specific matter.

There is an initiative on the Internet called aviner.net that claims to be run by concerned avrechim (yeshiva students), and which deligitimizes him, quoting other leading Rabbis – some of which I have little time for, and some of which I have a lot of respect for. The most widely followed Rabbi who is quoted as apparently having spoken out against Aviner passed away last year which makes it difficult to check up on his views…

Rabbi Aviner has apparently sued for trademark infringement and passing off. see http://www.holesinthenet.co.il/archives/20807

I think that regardless of the truth or otherwise of the allegations in this cowardly smear campaign by faceless avrechim, there is no grounds for legal action under IP laws. There may be a case of defamation and libel. That will depend on whether the quotes attributed to him or to other rabbis about him are true or not.

One wonders why he didn’t complain to a Bet Din, unless there is no Bet Din that would give a Din Torah on the matter.

Actually, the best forum in this case is ICANN. He could use their facilities to have the website reassigned to him.

There have been similar cases in the past that went before the Israel Courts.

In T.A. 840/01 the Israel Bar v Ben David, the Tel Aviv District Court ruled that an Israeli licensed attorney’s use of the domain name www.hapraklit.com (Hebrew for: the lawyer.com) was an infringement of the Israeli Bar’s rights to the then non-registered trademark Hapraklit, used by the Bar for its journal and publications. The Court ruled that the addition of the .com suffix was insufficient to ameliorate the infringement (the Bar’s site was www.hapraklit.org.il) and there was reason to suspect that web users looking for the Israel Bar would unfairly be drawn to the lawyer’s website and the lawyer would thereby be able to expand his services and client base, free-riding at the expense of the Bar. The Court ordered the lawyer to surrender the domain name to the Bar.

On the other hand, in T.A. 1221/02 Kiryat Motzkin Municipality v Friedman, the defendant, a candidate for mayor of Kiryat Motzkin, a town in Northern Israel, set up a website with the domain: www.motzkin.co.il, as well as other domain names containing the name Motzkin. The defendant used the municipality’s emblem on the site and published articles against the incumbent mayor. The Municipality argued that use of the domain name together with the emblem would be likely to mislead Internet users to believe they had reached the Municipality’s official website. The Municipality argued that its service mark had been infringed, its mark diluted, its creative rights infringed and that it had been slandered by the defendant. The Tel Aviv District Court ruled that the geographical name Motzkin, is not identified exclusively with the Kiryat Motzkin Municipality which itself is known as Iriyat Kiryat Motzkin (Hebrew for the Kiryat Motzkin Municipality). The Court ruled that the name Motzkin belongs to the general public and not to the Municipality, in particular, and that there was no justification to grant the Municipality with monopolistic rights to the name Motzkin. The name should be available for use by all businesses and institutions within the vicinity of the City. Furthermore, the Court held that use of the City’s emblem without the name of the Municipality was not an infringement of either. With regard to the charge of slander, the Court held that the Internet was an effective tool for freedom of expression, including the expression of political views and accordingly, there was no justification for ordering the removal of the defendant’s publications from his Internet domain until the charge of slander had been proved at the evidence stage of the proceeding.

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

Israel Tech transfers Announce Deal With Google

March 17, 2011

The tech-transfer organizations of the Hebrew University, Tel Aviv University and the Haifa Technion have closed a deal with Google, under which the universities will engage in research into online auctions, gaming and the like.

See http://www.businesswire.com/news/home/20110316005678/en/Hebrew-University-Tel-Aviv-University-Technion-Sign for further details.

COMMENT

Despite doing IP work for all the organizations concerned, I view the above development with distaste.

I am in favour of academic research that results in patentable inventions that are filed by tech transfer organizations and then licensed to commercial parties, providing that the inventors can and do publish their research. In this regard, we note that patent applications once published, are a form of publication in all respects.

I also have no problem with universities undertaking applied research of commercial importance. Nor do I have a problem with universities accepting endowments from commercial entities, such as google.

What I am not so keen on is what appears to be intellectual prostitution wherein the organisations that should be creating knowledge for furthering society are becoming R&D centers for commercial organizations. My Ph.D. research at the Hebrew University was funded by and connected to an R&D project with commercial aspirations. Nevertheless, it was undertaken at a university, not at the McDonalds University of Fast Food.

I don’t like to see Israel universities held by their googlies. I do not want my income tax contributions to be used as a sort of Israel govt. R&D loan to Google. However, I acknowledge that I have not read the agreements, only the press release. Maybe I am exaggerating.

3 Comments | Academia, Intellectual Property, Internet, Israel, Israel IP, Israel Patent, Opinion | Permalink
Posted by Dr Michael Factor

Class Action filed Against the Israel Commissioner of Patents

October 22, 2010

Following criticism of Dr. Meir Noam, the Israel commissioner of Patents, for not publishing basic details of new Israel patent applications in the reshumot, the official government publication (see Israel Commissioner of Patents Criticized by Chairman of the Knesset Constitution, Law and Justice Committee) a couple of Haifa inventors / applicants Yair Nissan and Yan Lishinsky have filed the class action against the Commissioner of Patents and the Patent Office via the law offices of Adv. Ronen Kenan and Adv. Eran Goren, for NIS 6,000,000.

If they can prove their case that the Israel Patent Office collected NIS 160 (i.e. about $45 US) for a service that they technically failed to provide, then everyone who filed applications recently will be entitled to a refund, and, for filing the class action which is a public service, the complainants will be entitled to a large chunk of that. Not a bad bonus for people mostly motivated by civic duty.

The sums of money collected for this service do add up. Apparently to about NIS 3,000,000 a year.  I suspect that the cost of creating, updating and hosting the database and the underlining website is at least that figure though. Adv. Goren sees things differently. according to his statements reported on Ynet, uploading by a secretary clicking on a button is obviously cheaper than printing the pamphlets.

According to Advocate Goren “but the problem isn’t only financial, but it is mainly legal, relating to the validity of the Internet publication which is critical to defence of the copyright. [sic]“

MUSINGS

We think it most unlikely that even if the courts rule that publication ha to be in the reshumot, they will rule that failure to perform the first publication – which includes title, date, priority date if any, and name of applicants and inventors – in the correct manner will rule that in consequence of this failing, all patents filed in the past 4 years are unenforcable. the learned attorney - who until now was unknown to me, also gets copyright and patents muddled, so I don’t overly value his judgement and legal acumen. 

The test case, is Israel Patent Number 192520 titled “Switching apparatus and method”. Using the online database of the patent office, I could find this information from home. So can anyone else. It is abstracted by Inpadoc and so I could search by application name, inventors, title, number or filing date via Espace or Delphion. The electronic publication works.

 Locating the details in the correct official pamphlet would have been difficult. Indeed finding the correct official pamphlet in a library or patent office is not easy.

The application never went anywhere abroad and was probably a get-rich-quick invention. Maybe now the inventors will get rich. Who knows?

I suspect that modern digital printing technology rather than physically setting type has made printing cheaper as well. Official fees were set in about 1968 following the legislation of the 1967 Israel Patent Law, and are updated twice a year in accordance with the cost of living index. Since printing costs do not go up with inflation, there is no real correlation between printing costs and the fee charged.

Even if the courts rule that a refund is required, I suspect that the service charge that the various patent firms will take for handling this refund will be more than the refund is worth. If the patent office decides to refund the money directly, then for the 2/3 of applicants that are foreign applicants, the bank charges will eat up the sum.

On display in the new patent offices are the original hand written patent registers. I am not sure that the second publication fee and fees for updating the register aren’t intended to pay for a scribe to update these ledgers with his fountain pen. Maybe I should persuade one of my clients to file a class action on this. After all, the fees are higher and the period over which the patent office has failed to update these ledgers is far longer than a mere four years. Furthermore, the term “pinkas” is more likely to imply a hand-written ledger than the term “reshumot” to mean a printed publication.

Indeed, Dr Noam is just one of many Commissioners to fail in their duty in this regard. We can sue all previous commissioners that are still with us, and the estates of those that are not.  

Dr Noam is coming to the end of his term of office as commissioner, and it would be a real shame if this incident will leave a stain on a remarkable term of office in which he turned around a captainless ship and brought it to a safe harbour in their plush offices; in which the patent department received ISO certification; in which the patent office received recognition by WIPO as being of the standard to provide International Search Reports and Preliminary Examinations of PCT applications and in which Israel joined the Madrid Protocol.

1 Comment | Intellectual Property, Internet, IPO, Israel, Israel IP, Israel Patent, Israel Patent Office, Patents, Uncategorized | Permalink
Posted by Dr Michael Factor

IBM and HP Sued by Backweb for Patent Infringement

September 25, 2010

BackWeb Technologies Ltd., an Israel based Internet software company, has announced filing lawsuits in the United States District Court in San Francisco, California against IBM and HP. Backweb alleges patent infringement and is seeking damages, an injunction and a declaration by the Court that the IBM and HP software update technologies infringe BackWeb’s patents.

The company alleges that IBM’s Tivoli Provisioning Manager for Software product and IBM’s recently acquired BigFix products infringe four U.S. patents owned by BackWeb covering methods for transmitting information between a remote network and a local computer and distributed client-based data caching systems.

BackWeb also alleges that HP’s Client Automation product infringes three U.S. patents owned by BackWeb covering methods for transmitting information between a remote network and a local computer.

Back in June, Backweb settled out of court with Microsoft.

See Backweb Announces Resolution of Litigation with Microsoft

Leave a Comment » | Intellectual Property, Internet, Patents | Permalink
Posted by Dr Michael Factor

The pitfall of Section 17c – Varicom Communications LTD shoot themselves in the foot

September 12, 2010

Varicom Communications LTD, an Israel company, http://www.varicom.co.il/ filed a patent application (number IL 135684) in Israel. The claimed invention was quite nifty. It allowed mobile phone owners to know who had tried calling them and when. Back in April 2000 when the application was filed, the idea was less obvious than it seems today.

Over the course of the year, the idea was developed somewhat, and a PCT application claiming priority from the Israel application but with added material, was duly filed. 

A national phase entry into the US, number USSN 08/569,209, eventually issued as US 6,754,316, and the applicant requested allowance on the basis of the corresponding equivalent US Patent, conformed the claims and specification of the Israel application to that of US 6,754,316, and the patent was granted and published for opposition purposes.

Herein lies the problem. The additional material which is necessary to support the allowed claims is only entitled to the date when it was added, sometime in 2005, way after the PCT application published. Thus the PCT application became prior art to the invention and torpedoed the patent.

Comverse LTD http://www.comverse.com/, an International company with a large Israel presence, filed an opposition also claimed that prior art mentioned in the International Search Report of the PCT was not placed on record by the applicant during the Israel examination, contrary to Section 18 of the Law (duty of disclosure). They also claimed that a product of theirs – Trilogue INfinity Platform anticipated the application in its entirety, using affidavits to support their claims that the product was sold to clients before the priority date. The applicant did not respond to the opposition procedure so the historic truth of these allegations was not examined on their merits. This leaves the validity of Varicom’s corresponding US patent somewhat unclear.

The morals of the story:

  1. First filing in Israel is a great idea, as the application only publishes on allowance
  2. Adding material before filing a PCT or regular Paris convention applications is also OK, but amend the priority application to include the additions before the PCT or foreign filings publish 18 months from priority
  3. Cite everything of relevance under Section 18, and if adding the specification prior to allowance under Section 17c, check that anything relevant to the added material is also cited
  4. Be careful when invoking Section 17c
  5. Use counsel when fighting oppositions – Dr Oded Cafri, founder and president of Varicom didn’t use professional representation. Not a good idea. 
  6. If you are caught out probably best to abandon the application rather than letting an opposition proceedings publish which is minimally embarrassing and potentially very damaging.

Leave a Comment » | infringement, Intellectual Property, Internet, Israel, Israel IP, Israel Patent, Israel Patent Office, Israel Patent Office Rulings, Patents, Uncategorized | Permalink
Posted by Dr Michael Factor

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