DSM IP Assets Opposes IL 177724 to Refine Technologies – Striking Evidence from the Record

April 22, 2015
 Selling Culture?


Selling Culture?

Refine Technologies LLC are opposing Israel Patent Numbers 177724 and 205606 to DSM IP Assets. These applications, titled “Methods For Reducing The Degree Of Aggregation Of Aggregating Cells In A Cell Culture” are a national phase entry of PXCT/EP2005.002374 from 4 March 2005 and a divisional application thereof.

The two applications claim priority from EP 04075702.3 and EP 04075703.1 from 5 March 2004, and from EP 04077656.9 and EP 04077657.7 from 27 September 2005. The parent was allowed and published for opposition purposes on 31 January 2011 and on 27 April 2011 Refine technology LLC submitted an Opposition.
The Opposition proceeding was frozen until the divisional application was allowed and that was opposed on 29 November 2011. The two opposition proceedings were combined and the Statements of Opposition and responses were filed for the two cases together.
Both sides submitted expert opinions. In their answer to the Applicant’s response, Mr Jerry Shevitz submitted a second affidavit and the DSM IP Assets allege that this relates to art that wasn’t cited in the original statement of case and also raises new issues. The sections relating to the additional citations and new issues should be struck as an illegitimate widening of the grounds of opposition. Furthermore, they weren’t an answer to the response.
In an additional argument, DSM IP Assets alleged that Mr Jerry Shevitz relied on a decision of the South Korean court concerning a corresponding application and that this was hearsay and thus inadmissible.

Refine Technologies LLC countered that DSM IP Assets waited more than six months after Shevitz’ answer was filed and that it was thus too late to request that the references be struck from the record. They also allege that the claims were in the original statement of case and so rejected that they were illegitimately widening their opposition. They argued that the new citations weren’t new to DSM as they were cited in Korea and were only brought now, due to the response that DSM filed that ignored these references that they were familiar with. Consequently, the new citations were properly to be considered as being an answer to the Applicant’s response. As to the Korean case being a foreign court ruling, the opposer accepted that it wasn’t binding on the Israel Patent Office or in an way precedential, nevertheless it was a relevant ruling on the same issue by a respectable court and was thus admissible comparative law for the commissioner to consider.

DSM objected to the application as lacking novelty in light of US 6,544,424 from 2003, a patent now assigned to DSM. Whilst admitting that this patent did not relate to Refines ATF (alternative tangential flow) technology, they submitted that this was not relevant to the results obtained. DSM further argued that the combination of US 6,544,424 and other prior art renders the claims obvious. For good measure, they also argued that the claimed inventions were not enabled and the claims were inadequately supported.

In her Ruling, the Deputy Commissioner, Ms Jacqueline Bracha acknowledged that the submission to strike evidence could have been submitted earlier, but felt that the three months remaining to DSM before the hearing gives them adequate time to relate to the issue on its merits.

The material that Refine objected to may be categorized into three groups:

  1. Material that could have been referred to in the original opposition
  2. Material that unfairly widens the grounds for opposition
  3. Material that relates to foreign court rulings

Ms Bracha noted that Section 62 of the patent regulations only allows the opposer to file additional evidence to overcome something refuted by the applicant or in response to a new point raised by the applicant. Consequently sections 2, 19.2, 20, 24 and 41, and the related appendices which were considered as new material or widening were ordered struck from the record. As to foreign court rulings, Ms Bracha considered these relevant and helpful and that these could be submitted, whilst noting that she was in no way bound by them.

No costs were awarded.

Intermediate ruling Refines Opposition to DSM IP Assets Opposition to Israel Patent Applications 177724 and 205606, Ms Jacqueline Bracha, 16 March 2015

 


Is Automation A Good Thing?

April 12, 2015

computer compatible

I am aware that as a patent attorney I am  supposed to be technology-savvy. Sometimes however, I think that William Ludd had a point. I hate smart phones and have been trying to downgrade for ages. It apparently doesn’t work like that.

I’ve just received a reminder from the Design Department of the Israel Patent Office today. It opened up nicely on my screen. The only problem is that what opened up nicely in html was the reminder. The automatically filled in details such as the file number and date didn’t show up. I downloaded the file and it corrupted.

I contacted the design department and after a bunch of strange emails from the head of the department to the effect that the document sent to me electronically is exactly the same as that which they used to send manually, and that it opened OK on the Israel Patent Office website, eventually we concluded that my computer is configured differently from that of the Israel Patent Office machines.

I was a little put out when the Examiner asked me if my software was Kosher. I mean as a Patent Attorney who makes a living from IP, is it likely that I would be using a rip off version of Word? Of course my software is Kosher. That said, an eminent Israel IP Law Firm (which I shall not name here) was caught by the Business Software Alliance with one Microsoft Office disk for a dozen or so computers. Very embarrassing.

To send PCT applications electronically, I use Explorer as the electronic sending doesn’t work on Chrome. To update my electronic signature from WIPO I had to install Firefox. I asked the Chief Examiner of the Design Department what the problem is and what the fix is. She told me that most patent attorneys don’t have a problem, but there were a couple of others that do. One has asked for reminders to be sent by snail-mail only. The other managed to update his system.

Now the problem could be my search engine (Chrome, Explorer, Firefox, different versions). It could be the operating system. It could be version of the operating system or the fact that I configure menus in English but have Hebrew support. It could be the version of Word. What I don’t understand is why I should have to work out the problem and solve it? PDF stands for Portable Document Format. A PDF file should open up on an IBM compatible PC or on a Apple Mac computer. It is designed to open on any computer with any system and is a standardized format.

Why should I have to update my system to match the one used by the Israel Patent Office? At present, my office computer works nicely. It multitasks without problems. There is an old adage that “if it is not broken, don’t fix it.”

I have a more up to date configuration on a new computer at home. Unfortunately, it has been nothing but trouble. I am therefore loath to update my office system as it is working smoothly. I have little faith in computer support. I have a neighbour who provides support to my computers at home. Once one tries to solve one problem by updating one component, suddenly the printer stops working, the screen goes blank, Hebrew types from left to right or English from right to left. My fairly new home computer system has never worked and we’ve reinstalled everything.

I think the Israel Patent Office should send PDFs.

Back in the old days when we had to submit PCT applications on disk, the Israel Patent Office (IPO) wanted the ZIG file on a 3 1/2 floppy. Having problems finding the disks and a disk drive, I suggested they move to DVDs. I was told that it was a waste of memory using something with megabytes of storage for a few KB of data. I pointed out that the issue was unit cost of medium not the total storage capacity. I offered to donate a CD ROM reader to the IPO. Eventually they saw reason.

 


PCT Direct

March 31, 2015

DIrect

The Israel Patent Office has announces an experimental service called “PCT Direct”.

PCT Direct is intended to make the process more efficient and to increase the value of the International Search Report (ISR) and International Preliminary Examination Report (IPER) that the Israel Patent Office produces as a Searching and Examining Authority of the PCT (Patent Convention Treaty).

The service is aimed at PCT applications claiming priority from an Israel Application and the system is designed to help respond to the Notice Prior to Examination of the Priority Application

The Applicant will be able to relate to all issues in the Notice Prior to Examination. The response is, however, not part of the PCT request. It seems that the idea is to file a PCT request as a response to a Notice Prior to Examination, submitting a marked up and clean copy, details of other prior art known to examiner and details of first publication.

If the art cited by the Applicant is of value, half the search fees will be refunded.

The PCT response and interaction will be considered as a response to the prosecution of the priority document if not yet allowed.

Apparently the Israel Patent Office is only the second authority, after the EPO, to offer this exciting new service.

 

COMMENT

I am confused as to the point and purpose of this development.

abbreviation

I have an aversion to abbreviations.  PCT, IPER, ISEA, ISR – at least the Talmudists had the excuse that scribes wrote by hand and parchment was expensive. Nevertheless, WIPO (World Intellectual Property Organization) uses them, so I suppose we must conform.

The EPO’s description of the PCT Direct service may be found here.

More substantively, The PCT application should be filed within 12 months of priority. Israel Applications publish automatically at 18 months, so one wonders what first publication is being considered here.

I think that this initiative is designed for applications that are made special and examined immediately, either due to them being green applications that are environmentally friendly, or due to applicant petitioning based on age, suspected infringement and the like. It is possible that this has ramifications for a PCT application claiming priority from an earlier PCT application.

It also seems that the applicant need not actively file PCT responses in the parent file but can rely on the system doing so automatically.

Not too long ago, the search report of the PCT was considered as something of little value and was often ignored by examiners who examined to grant patents.  Then came the Patent Prosecution Highway, and then the Superhighway. I think this further development is designed to demonstrate that the Israel Search and Examining Authority, is willing to grant patents based on their PCT work, as is, apparently, the EPO and to create additional trust in the system. Hopefully this will translate into less duplication and a faster, more efficient, high quality service.

This is, however, speculation.

Readers who can briefly summarize what PCT Direct is all are about are cordially invited to do so.


Plasson

January 25, 2015

PLasson

Plasson manufactures pipe couplings. Unidelta launched a competing product and Plasson claimed patent infringement of their patents IL 125899 and IL 127327 and passing off and requested an injunction. The District Court accepted the charges that the “main point of the patent” was infringed and issued an injunction preventing the manufacture, import or sale of Unidelta’s pipe connections in Israel as they are a copy of Plasson’s product. On Appeal, the Supreme Court overturned the finding of patent infringement and referred the case back to the District Court. The Supreme Court ruled that where the similarities between the allegedly infringing product and the patented invention lie in features that are in the public domain, there can be no case of infringement.

Background

In addition to literal infringement of the claims of a patent, Section 49 provides grounds for legal remedies where the kernel of the patent is copied. This is rather like the “pith and marrow” doctrine in the UK. Essentially, the Law provides remedies where claim infringement is avoided by a technicality, and may be seen as similar to the doctrine of equivalents. Arguably contributory infringement and inducement to infringe may be considered as judicial extensions of this doctrine. It is important to allow general inventing around, but to avoid situations where poor claim drafting can result in no literal infringement of the claims.  What the Supreme Court has done is to clarify the extent of application of Section 49.

Ruling

Judge Meltzer of the Israel Supreme Court ruled that Section 49 provides monopolistic powers to the patentee to prevent literal infringement of the claims defining the invention and also similar products / processes that infringe the kernel of the invention. In this instance, both parties accept that there is no literal infringement so the only issue is the kernel of the patent. The kernel cannot be wider than that described in the Specification and, where the patent is for a device or system comprising a combination of known parts, the kernel of the patent cannot include the parts themselves. In this instance, the District Court did not address the question of what the kernel of the patent is, and without identifying the kernel of the patent, it is impossible to establish that this is infringed by Unidelta’s product. Once the kernel is established, the court must consider whether the infringing product operates in a similar way to achieve similar results.

The Supreme Court ruled that the patent issued because of a limiting feature added to the other components.

The main claim recites:

“1. A pipe coupling comprising a tubular housing having an axial bore adapted to receive a pipe end to be coupled and having an externally threaded housing portion and an inner housing abutment; a pipe gripping sleeve having formed therein a plurality of substantially equiangularly distributed, axially directed slits extending from a first end thereof to a region adjacent to but spaced from a second and opposite end thereof thereby defining an integrally formed, axially distortable, ring-like sleeve end portion, a first axial portion of said sleeve, through which said slits extend, tapering externally from a peripheral, outwardly directed flanged portion towards said first end and being formed with a plurality of inwardly directed, axially spaced apart serrations; a tubular collar having a first inner axial portion tapering from an inner collar abutment to a first end of said collar and a second inner axial threaded portion extending from said collar abutment to a second and opposite end of said collar; and a flexible sealing ring; the arrangment of said coupling being such that with said pipe end extending through said collar, sleeve, sealing ring and housing, said collar is screw fitted on said housing, said sleeve is located in said housing and said collar with said flanged portion located between said collar abutment and an adjacent end of said housing and said sealing ring is located between said sleeve ring and said housing abutment; screw tightening of said collar on said housing causes the respective tapering portions of the collar and sleeve to be mutually displaced with the gripping contraction of said sleeve about said pipe end and the axial compression of said sealing ring about said pipe end”.

Plasson’s patent is for a ring fitting that includes a wide and flexible ring that enables different sized pipes to be attached together in one smooth motion without dismantling the connector. Since Unidelta’s system did not include this limiting feature, but merely combined pre-existing components to create an alternative pipe fitting, there was no infringement of the kernel of the patent.

Quoting from the specification:

Pipe couplings of the type herein described, which are presently in wide-spread use, normally require pushing the pipe through the seal (typically an O-ring) in the bore of the body member in order to achieve compression of the O-ring on the pipe, and thus a leak free joint. However, for pipes of large diameters, the operation of pushing the pipe through the O-ring seal requires a large force, making the operation very difficult, and sometimes even necessitating an extra operation of chamfering the pipe end for this purpose.

A further disadvantage in the pipe couplings of the type herein described now in use is that such couplings do not tolerate substantial variations in the pipe diameter so that precise pipe diameter tolerances must be maintained, or a large number of different-size couplings must be produced for the different diameter pipes to assure good sealing and gripping actions”.

“…a pipe coupling constructed in accordance with the foregoing features provides a number of important advantages including: convenient assembly, since the particular seal, in its relaxed condition, introduces very little resistance to the forceful entry of the pipe during assembly; …increased diameter range of pipes capable of being coupled, since the two-ribbed (or three-ribbed) sealing ring can accommodate substantial differences in diameter sizes…”.

This emphasizes that Plasson did not invent the only pipe coupling for joining pipes of different diameters, and there patent was limited to one that is easy to seal due to little resistance.

As to passing off, the Supreme Court was critical of the District Court for finding this without explanation of why they considered that this was applicable. The Supreme Court referred the case back to the District Court for further consideration on this issue.

Judge Meltzer established costs against Plasson of 75000 Shekels.

Judge Miriam Naor (now president of the Supreme Court) commended Judge Melzer on reducing the issue to non-technical matters without technalese that regular people could understand.

Appeal 6750/10 Unidelta vs. Palson, Supreme Court 18 December 2014

COMMENT

One wonders who the non-technical people are in this case, plumbers or the President of the Supreme Court? Is the technical issue here flanges and pipes, gaskets and washers, or non-literal infringement, pith & marrow and other legalese?


European and Israel Patent Offices Sign a Bilateral PPH

December 10, 2014

pph

The European Patent Office (EPO) and the Israel Patent Office (IPO) have agreed a patent deal set to speed up examinations at both offices. Starting next month, the Patent Prosecution Highway (PPH) will allow applicants to request accelerated examination of a patent at either office provided the claims have been previously deemed acceptable by the other. The agreement was signed on December 4 by heads of both offices in Brussels, Belgium.

Apparently Asa Kling, director of the IPO, said the programme would “enhance co-operation between the offices” and further strengthen the economic and technological relations between Israel and Europe.

COMMENT
We see this as a great development, not least because Israel Applications may be accelerated fairly easily under a variety of routes including Section 17c of the Israel Patent Law 1967 and relevant patent office circulars. European Applications can linger in the queue for examination for quite a while, and incur annual maintenance fees. Then again, once allowed, a European patent has to be ratified and is then subject to renewal fees in the countries where it is ratified. The main thing is that this gives applicants choice and flexibility.


A Meeting With Israel Trademark Examiners

November 26, 2014

israel patent office logoTM R

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

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

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

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

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

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

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

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

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

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

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

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

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

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


Combining Similar Proceedings

November 19, 2014

combining hearings

C.T.S. LTD filed Israel trademark application numbers 2253382 and 253359 “Lactofil” and לקטופיל. The Mark covers Cosmetic preparations namely lotions, creams, mousses and soaps for nourishment and cleaning of the skin and face all in Class 3. “” Laboratorios Genesse, S.L. opposes the marks

Meanwhile, Laboratorios Genesse, SL. has filed Israel trademark application number 249389 for Lactivit for Soaps, gels, perfumery, essential oils, cosmetics, lotions for hair and skin care, creams for hair and skin care, and dentifrices also in Class 3. C.T. S. LTD are opposing this registration.

Both parties propose combining the hearings. The Lactofil hearing was scheduled for 29 October 2014.

The legal issue in both cases is likelihood of confusion with the similar product of the other party. The parties and the issues in both cases is the same. Combining the cases saves the parties time and expense, and saves judicial resources. In one case there are additional claims of inequitable behavior, but this is not seen as sufficient justification to hear the cases separately.

As both parties have equal rights, Ms Yaara Shoshani, Adjudicator at the Israel Patent and Trademark Office ruled the cases are to be combined, however in each case, at the combined hearing, the Opposer has the right to cross-examine the applicant’s witnesses and only then may the Opposer’s witnesses be cross-examined.

In the circumstances, no costs were awarded.

Decision to Combine Similar Trademark Proceedings, Yaara Shoshani Caspi 6 October 2014. 

COMMENT

Apart from the parties in question, there is a third party of importance, i.e. the public. It seems to me that combining the proceedings is not only economical for the parties and for the public purse in terms of judicial expense, but also is most likely to result in a sensible ruling.


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