Another patent restoration decision

October 17, 2014

Israel Patent Number 158968 to Ofer Dagan is titled “Solar water heater”. The application was filed on 20 November 2003 and the third renewal, covering years 10-14 should therefore have been paid by 20 November 2013, and with extension fees, by 20 May 2014. Applicant failed to pay these fees and the patent lapsed, with a notice of the patent lapsing being publishing in the July 2014 Journal.

The patentee signed a deal with a Cyprus based company that was supposed, inter alia, to maintain the patent. On 17 November 2013, the Cypriot company paid the fee for a filing a new patent application instead of the third renewal fee. Proof of payment, designating the patent number was appended to the request for reinstatement.

The Cypriot company turned to an Israeli company to maintain the patent and discovered the mistake. In the circumstances, the Deputy Commissioner Ms Jacqueline Bracha ruled that the circumstances fell within the ambit of section 60 of the Israel Patent Law, the difference in fees should be paid and the patent should be reinstated.

 


Israel IP 2013, a Quantitive Overview

June 17, 2014

 Israel Patent Report 2013

The Israel Patent Office has published its summary of 2013. Their focus is on their efficiency. I have culled and am reporting the information that I believe is of more value to IP practitioners. My interpretative comments are in italics.

To enjoy the graphs and the graphics – a hot air balloon lifting a paper car, and no-doubt signifying hot air, recycling, creativity, and fen-shui, or something, readers can access the original here. I think that this literary digest is more user-friendly. Each to his own.

PATENTS 

The number of patent applications in 2013 was 6184 which is down 9% from 6793 in 2012, and is the lowest number since 2003. Approximately 600 of these applications are Divisional Applications and 6 are patents-of-addition.

The Israel Patent Office notes that since 2012 there has been a 40% discount for local applicants having a turnover of less than 10 million Shekels, but fails to note that there was a massive jump in filing fees of about 40% back then. My take – the Shekel is very strong so Israel is a more expensive destination than some others.

The number of first filings in Israel is 889, which is also a record low, less than at any time in the past decade. It is possible, however, that more Israeli start-ups are first filing in the US, either as Provisionals or regular US applications since the US fees have been going down, and the dollar is weak.

The pendency period prior to examination starting has been dropping steadily and is now 28 months on average, with biotech being especially fast. This may be explained by the increase in Examiners due to the Israel Patent Office becoming an International Search Authority of the PCT, which required the IPO to employ at least 100 examiners.

Second office actions typically issue 5-6 months after a response is filed, which is similar to last year and rather better than in the past. 

On average, examination takes 2 to 27 months, with Biotech taking rather longer on average – 37 months.

The Israel Patent Office has issued 3698 patents in this period, which is more than for any other solar calendar year in the past decade except 2011. 

The number of PCT applications filed in Israel was 1199 which is up from 1113 in 2012, but still below 2011 levels.

658 out these (55%) filing in Israel, have taken advantage of the relatively low International Search Fees and elected Israel as the Search and Examination Authority. 321 selected the EPO and 220 selected the USPTO. 

The report claims that the total number of applications filed by Israelis has remained constant, but more are filed in Israel as opposed to in Geneva. I don’t thing this is true, but do accept that the service provided in Israel is at International levels, with 91% filing electronically. 

What is clear is that in both absolute numbers of originating countries and by Receiving Office, Israel ranks 17, and clearly has a smaller population than any of the countries that have more filings.

Israel is the second fastest receiving office at getting applications to WIPO, with 99.3 applications getting there in les than four weeks, only lagging behind Denmark. This is a fairly useless statistic for the Israeli inventor, but no doubt gratifying to Dr Michael Bart and his team. I have been presently surprised by the quality of Israel generated International Search Reports and have recommended them to clients. In the past the USPTO often failed to provide the International Search Report (ISR) in a timely manner, but they have got better and also better at searching, even occasionally finding relevant art in non-US patent literature. The US fees have dropped somewhat and they may be more popular.

Israel is proud of the speed of PCT examinations, with 90% being examined within 3 months, ahead of the US and EPO. Furthermore, they blame security related examinations being forwarded to the Ministry of Defence for clearance, for the remaining 10% which take 4-5 months to issue.

There is an interesting of table of where incoming patent applications originate, that shows both Paris Convention filings and PCT national phase entries. This is of value when planning overseas marketing strategy.

Lists of the more prolific local and international filers into Israel had few surprises.

Some 20% of patents are issuing by modified examination under Section 17c, relying on a foreign issued patent from one of a list of examining authorities. This number has been dropping steadily since 2010, and is below 2008 levels. 

Some 130 applications were examined out-of-turn by one or other acceleration mechanism. This is higher than in previous years and no doubt reflects the various fast lanes of the Patent Prosecuting Highway, since only 18 applications were considered ‘green’ and fast-tracked thereby 

Of the 3887 applications allowed, 32 were opposed. 27 oppositions were dropped by the opposer and 14 resulted in the applicant dropping the case. Of the four patent oppositions that went full term to decisions, 2 applications were allowed to issue and two were rejected, with the ruled on oppositions taking an average of just over 4 years to be resolved.

Five applications to cancel issued patents were filed with the patent office. 21 final rejections were appealed. 9 requests for patent term extensions were filed and 4 were granted. 41 lapsed patent requests were considered and there are 8 pending decisions for employee inventor compensation. 

In absolute terms, there are fewer applications filed in Israel than in South Africa, New Zealand or Malaysia. In terms of patents per gross national product, Israel lags behind Korea, Japan, USA and most of Europe. 

When normalized for the size of population, Israel remains surprisingly attractive. Israel remains a must-file country for pharmaceuticals, biotechnology, organic fine chemistry (whatever that means) and medical technology. It holds its own in computing. Interestingly, Israel is also noticeable as originating PCT applications for medical technology and pharma, so Israel’s innovative companies are no less significant than the Israeli generic suppliers.

DESIGNS

The number of design applications was 1353 which is the lowest for a decade. 492 of these come from Israel. Of the 861 foreign cases, the US is the most prolific filer, followed by Brazil (104 applications, mostly Stern Jewelry), Europe, Korea, Japan and China.

TRDEMARKS

There were 9580 trademark applications into Israel in 2013. This number is less than 2006 to 2008 but higher than the other years of the last decade. Part of the drop is due to the introduction of multi-class applications, since there is an overall growth in the number of classes being filed in. Multi-class filings and the fact that of the 9580 applications, some 4930 were Madrid Protocol applications, implies less work and income for Israel trademark attorneys in basic filing. There are, however, some 176,978 issued trademarks in force, that need renewing. (Costa Rica has 183,226, and I suspect a better mark to attorney ratio).

As of the end of 2013, there were 20 competing mark cases, 98 trademark oppositions, 14 single party appeals and 40 cancellation or registry correction cases. Overall, the Israel Patent Authority has managed to resolve more of these than have been initiated.

Based on WIPO statistics, Israel ranks 46 in terms of trademark originators, behind Algeria, Kazakhstan, Bosnia and Herzegovina and Azerbaijan. Hoewever, Israel is only 19th in terms of popularity as a destination under Madrid.


New Procedures for Prosecuting Israel Patent Applications

January 14, 2014

Israel patent office logo                        israel patent

The Israel patent office has issued new procedures for patent prosecution.

Notice Prior to Examination

In response to the Notice Prior to Examination, applicants are required to provide a list of relevant prior art including details of citations in corresponding applications in other jurisdictions. Non-patent literature should be supplied in full. Patents cited in the background of the specification do not need to be listed again.

Applicants are also required to provide a full list of corresponding patents and applications in other jurisdictions.

Where there are more than 50 claims, the claim set must be amended or excess claim fees must be paid.

Finally, the first publication of the invention must be reported and failure to do so will be considered as a requirement not met and may invalidate the patent.

Amendments

It is now no longer necessary to submit marked up and clean copies of amended pages during prosecution. Claim amendments should be made by submitting a full set of marked up claims, whereas only amended pages to the specification need be submitted. These amended pages should be marked as {application number}/2, {application number}/3, etc.

On allowance, a complete, clean copy of the patent as allowed should be submitted together with the issue fees.

Comment

I see the logic and approve of the new procedure for making amendments.

Apparently, the new procedures follow a meeting with representatives of the professional organizations. The head of the association of patent attorneys, Dr Meir Noam, is the previous commissioner and does not practice opposite the patent office and hasn’t done so for about a decade. The head of the AIPPI Israel Chapter is a litigator. I therefore wonder to what extent the changes take into account the professionals that prosecute opposite the patent office.


Pharmaceutical Patent Term Extensions – Israel Patent Office Considers Request to Grant Extension for Requesting Extension

January 7, 2014

scar jel

Israel Patent Application Number 217056 to Advanced Biotechnologies LTD. is titled Silicone Scar Treatment Preparation.  The patent application is still pending. According to applicant, the patent covers medical equipment marketed in Israel as Kelo-Cote Jell, Kelo-Cote Spray and Kelo-Cote UV. The products were authorized for sale in Israel from 9 June 2013 and are listed in the medical equipment register of the Ministry of Health. On 26 October 2013, the Applicant requested a three month extension to file a request for patent extension in the event that the patent application is allowed and a patent is granted.

64D. States that:

The Registrar shall not grant an extension order, unless the following conditions have been met:

(1) The material, the process for its production or its use, or the medical preparation that incorporates it or the medical equipment was claimed in the basic patent and the basic patent remains in effect;
(2) in respect of a medical preparation—a medical preparation that incorporates the material is registered in the Register of Medical Preparations under regulation 2 of the Pharmacists Regulations (Medical Preparations) 5746—1986 (hereafter: Pharmacists Regulations);
(3) the registration said in paragraph (2) is the first registration that allows the material to be used in Israel for medical purposes;
(4) no extension order was granted previously in respect of the basic patent or in respect of the material.

Section 64(O)a of the Israel Patent Law grants 60 days for filing a request for a patent term extension and this deadline was missed. HOWEVER, Section 64(O)a relates to ‘medical preparations’.

Despite the contention of the applicant that he was requesting an extension for filing a request for a pharmaceutical preparation, the Commissioner considers that the products in question are not medical preparations but rather ‘medical equipment’, and doesn’t think that the time period of Section 64(O)a of the Israel Patent Law refers to ‘medical equipment’, so there is a lacuna as to what the window for filing the request is.

Medical Equipment is certainly included in Section 64 of the Law:

“medical preparation”—any form of therapeutic drugs that underwent processing, including a preparation for use in veterinary medicine and a preparation of nutritional value intended to be injected intravenously;
“material”—the active component of a medical preparation or salts, esters, hydrates or crystal forms of that component;
“the basic patent”—the patent that protects any material whatsoever, including a process for the production of a material, use of a material, a medical preparation that incorporates a material, a process for the production of a medical preparation that incorporates a material or medical equipment that requires a license in Israel (hereafter: medical equipment).

and it would appear that the requirements to allow a proper period for filing a request for extension are analogous for ‘medical preparations’, see  Re Asta Medica Aktiengesellschaft 101537, 108704, 92904 from 2002.

Consequently, the Commissioner ruled that Applicants have three months in which to submit a request for a patent term extension of the basic patent, from the basic patent No 217056 issuing, if it eventually issues.

COMMENTS

Section 64 A defines a “medical preparation” as any form of therapeutic drugs that underwent processing, including a preparation for use in veterinary medicine and a preparation of nutritional value intended to be injected intravenously. Section 64O. States that an application for the grant of an extension order shall be submitted in the prescribed manner, after the fee has been paid and not later than 60 days from the registration day of the medical preparation under the Pharmacists Regulations.

In this ruling, Commissioner Kling has decided that these materials are medical equipment and not medical preparations, and therefore the 60 day deadline does not apply. There is no deadline for medical equipment, so he is creating one and setting it as ninety days from patent issuing and not sixty days from receiving regulatory approval.

I can see cosmetic preparations being not considered as medical preparations, but in that case they would not be considered as medical equipment either. The title of the application implies that these are preparations, if not necessarily therapeutic. Apart from the hair splitting, I fail to see the logic of granting ninety days from patent issuance for medical equipment but sixty days from regulatory allowance for medical preparations. If there is a lacuna, then the time period for medical equipment should be learned from and be the same as the period for medical preparations.

The preamble of the main claim is “A spreadable preparation for aiding in the healing of wounds”. I think this is a medical preparation and the deadline was missed, not for the first time by the agents of applicant, see here. The time frame is extendible by the commissioner, but the standard should be despite the applicant exercising Due Care. We have no indication what happened and why the application wasn’t made within 60 days.

We note that in the Novartis case then Acting Commissioner Yisrael Axelrod gave a liberal interpretation of the patent term extension rules  in accordance with the 1998 amendment and was subsequently sideways promoted to the Beer Sheva District Court, i.e. literally out into the desert, and the Knesset reworded the law to make his interpretation untenable. The intention of the Knesset was not to grant a reasonable extension under reasonable conditions, but to make it as hard as they could to get patent term extensions. Each amendment to make getting extensions easier was under US political pressure. Each amendment not under US pressure was to make it more difficult.

This is an ex-partes ruling but we suspect that if and when the patent issues, the request for an extension will be opposed and eventually the courts will have their say, if the law concerning patent term extensions is not amended AGAIN in the meantime.  It is probably the numerous amendments to this chapter of the Law under US pressure that has resulted in these “lacunae”.

In the meantime, it appears that RAFA is supplying the product in Israel. See here 


Israel and Korea launch a Pilot Patent Prosecution Highway

December 30, 2013

israel korea relations

The Israeli and Korean Patent Offices have launched a Pilot Patent Prosecution Highway (P-PPH) under which the result of an examination in one of the jurisdictions if it is the office of first filing, may be used to fast track the application in the other.

There are two variations, the regular one is the PCT-PPH under which one office serving as an International Search Authority ISA and/or International Preliminary Examination Authority IPEA, and issuing an International Prelinary Examination Report IPER that is at least partially favorable, by having at least one allowable claim, may be used to fast track examination in the other jurisdiction.

The other variation is called the A PPH – MOTTANAI – where the A may be an indefinite object without antecedent. I have no idea what the MOTTANAI bit stands for.

Under the PPH – MOTTANAI, an application whose claims have been determined patentable in the Office of Earlier Examination (OEE) is eligible to go through an accelerated examination in the Office of Later Examination (OLE), upon an applicant’s request.

COMMENT

I am not sure if all these acronyms are helpful, but imagine that the fast tracking itself may be useful. At least in the electronic materials field, I’ve found the Korean Patent Office very efficient.

I see these international agreements are generally good for Israel politically. Israel and (South) Korea have a lot in common. Whether or not the PPHs (don’t try to pronounce that) will result in more filings in the two countries, it is too early to say. 

The PPHs  are provisional. If there are too many cases fast tracked under the system, the patent offices reserve the right to reconsider. This makes sense. It is a little like queuing with everyone else in the under 10 items, pensioners and handicapped line to the express check-out in the supermarket. One knows how to get into the fast line, but whether or not it is sensible to do so, is another issue entirely.


Withdrawing from Representation Before the Israel Patent Office

July 2, 2013

withdraw 2  withdraw

Aharon Demri, Myrr & Frankincense Fragrances LTD and Vered Arbel opposed Israel Trademark No. 247320 to Eliyahu Twitto.

The mark in question is an image of a woman (da Vinci?) and the words Myrr & Frankincense in Hebrew. The mark is reproduced below.

Myrr & Frankincence

After the opposers withdrew the opposition, the Applicant requested costs for having to fight the opposition. Before responding to the costs, the Opposer’s counsel, Advocates David Walberg &Larry Goldstein requested to withdraw from representation in this case. The request was based on them having lost contact with the clients. They claimed to have tried both telephoning and writing to the client without success.

Apparently hedging their bets, they added a footnote with alternative responses allegedly supplied by the Opposer.

Ruling

The commissioner, Assa Kling ruled that when deciding on whether to accept a request to release an attorney from his representation, it is necessary to find a balance between the responsibilities of the lawyer towards his client on one hand, and the freedom of the lawyer to provide services to whom he likes on the other. Furthermore, one has to bear in mind the public interest that is inherent in the attorney -client relationship. To ensure that the balance is maintained, Regulation 473b of the Civil Procedure Code 1984 and Section 17 of the Criminal Code entrusts the court with the decision regarding whether or not to allow the attorneys to resign from a proceeding.  The commissioner ruled that the same authority is entrusted to him regarding procedures before the patent office in general, and oppositions in particular.

Section 13 of the General Attorney Bar Laws (Ethics Code for Lawyers) 1986 defines the minimum standards for withdrawing from representation:

13 (a). If a lawyer takes on a case, be is not entitled to withdraw unless either:
there are differences between the course of action that the lawyer considers appropriate and that which his client wants, or
there is a legal reason that impairs the lawyer acting, or 
there is a conflict of interest, or
the client does not pay costs or expenses, or
some other reason justifying withdrawing.  

(b) if a lawyer decides to withdraw from representation prematurely, he must, without delay, inform his client, and, to the extent that he is able, he must stop the representation  in a manner that doesn’t prejudice his client’s rights.

(c) in an ongoing precedure before the courts, a lawyer may not withdraw unless doing so is in accordance with all legislation.

In accordance with the above, Circular 15-2012 from 20 November 2012 requires one withdrawing from representation to warn the client of the consequences of the withdrawal.

The attorney – client relationship is not a Catholic marriage, and one cannot oblige an attorney to represent a client for ever, particularly in civil matters. Nevertheless the attorney has to provide full details of his attempts to contact the client to convince the court that due care was taken not to damage the client’s affairs.

In this case, the attorneys merely indicated that they had lost contact and had tried phoning and writing. There was no evidence  submitted with the request to detail these attempts, and no indication that there was an attempt to inform the client of the consequences of withdrawing.  Finally, the Commissioner expressed his lack of comfort with the stage in the proceeding whereat the client disappeared, i. e. where costs are being ruled.

The request to withdraw was refused.

Opposition to Israel Trademark No. 247320 to Twitto, before Commissioner of Patents and Trademarks, 9 May 2013.

COMMENT

I have a certain sympathy with the attorneys here.  I have had (and still have) clients that are pains in the rear end, and clients that are incommunicado at the most inconvenient moment. Probably the worst case of this was a client who initiated a trademark opposition at the Patent Office with me, and a related Court action in the Jerusalem court using different representation and was impossible to contact since he went to participate in Big Brother. We could see the X$%^& on TV but couldn’t get instructions from him…


New Israel Patent Office Circulars

July 2, 2013

The Israel Patent Office has published a new Circular (22-2013) relating to amending patents after grant, and has also updated circular 11-2013 which relates to the Section 18 obligation concerning submitting prior art references to the Israel Patent Office.

22-2013

circular saw

As far as amending patents after grant, amendments are allowed provided that no new material is added and that the claimed invention is not widened. The Patentee must supply clean and marked up pages with a version number and must supply these as .PDF or .TXT file on a DVD so that third parties can review and oppose on publication for opposition purposes. Support for the amendments must also be provided.

11-2013

magic roundabout

With regard to prior art submissions, both the applicant and also third parties submitting relevant prior art under Section 164a within two months of publication of the Notice of Imminent Examination, must supply one copy of non-patent literature on a DVD or CD. The third party deadline is non-extendable.
Circular 13-2012 cancels the following circulars: M.N. 77, M.N 83, M.N. 51 and Circular 5 (Yoel Tzur).


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