Missing the bus

December 8, 2011

Omnibus claims laconically claim the invention as described in the specification and/or illustrated in the figures of a patent application, instead of reciting strctural detail or listing method steps.

Back in 2008, the then Israel Commissioner of Patents, Dr Meir Noam, banned independent omnibus claims as being unclear, see here. That was some five years after Dr Noam assumed office. He failed to  explain why their clarity had suddenly changed for the worst, or why he’d suddenly noticed.

The present Commissioner of Patents, Mr Assa Kling, has now issued a circular ruling (Circular 008/011) due to the inherent lack of clarity, omnibus claims will henceforth not be allowed, whether submitted in dependent or independent form.

COMMENT

He is, of course correct, but then again, they are no more unclear now than they were previously. We hope that this indicates that henceforth, dependent claims are going to be examined on their merits. We also wonder if there is any scope for Israel courts to enforce the “pith and marrow” of a patent, regardless of claim deficiencies.

Leave a Comment » | IPO, Israel, Israel IP, Israel Patent, Israel Patent Office, Patents, Uncategorized | 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

November 20, 2011

Adv. Doron Neuman represents Toolbox Design. Their trademark application number 224994 was refused, and the applicant requested and was granted a hearing. the day before the hearing, it was noted that he had not paid the request fee and the staff of the patent office made efforts to reach him, apparently beyond that required of them. On the day of the hearing itself, the Patent Office managed to make contact with the legal representative who informed them that his client had decided to forfeit his right to the hearing. In view of the costs incurred in preparation, costs of NIS 800 were awarded to the State for wasting judgement time, unproductively used due to applicant’s behavior.

The Case: TM 224994 to Toolbox design, 7 November 2011, by Adjudicator Ms Y. S Caspi

Leave a Comment » | IPO, Israel, Israel Related, Israel Trademark, trademarks | 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

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

Beanbag baby bath supporter design narrowly construed

August 31, 2011

Michal Ferst, a graduate of the Bezalel School of Art and Design created a baby supporter for aiding bathing a baby.

The device is an oval-shaped beanbag filled with polystyrene beans and covered with a stretch fabric.

A second company, Reem, Import and Marketing LTD., imported a competing product called Softeeze that is manufactured by Jagabon, a British Company.

Ferst sued Reem, claiming that her registered design was being infringed, and that they were passing off and guilty of unjust enrichment.

Noting that there were visual differences between the two designs and that the similarities that there were, could fairly be attributed to the purpose, and the fairly standard size and shapes of bathtubs and babies, Judge Varda Meroz dismissed all charges.

T.A. 41704-112-09 Ferst vs. Roem Import and Marketing LTD. before Judge Varda Meroz, Tel Aviv Central District Court.

COMMENTS

It is fairly rare for design infringement cases to be decided by the Israeli courts. In this instance, the ruling is a correct one. If the product is conceptually inventive, it should be protectable as a patent. The designs are sufficiently dissimilar that there is no registered design infringement or passing off.

I am in two minds concerning these type of devices. They may help support a baby and prevent drowning, but then again, may result in leaving the baby unattended. When our eldest was born we invested in a baby bath and a plastic support thingy for the baby. Never used it.

Reminds me of the grim old music hall song…

The mother turned round for a minute,
to get the soap from the rack…
She only turned round for a minute,
 but o-oh when she turned back..

her baby had gone
 and in anguish she cried
Oh where is my babe?
and the angels replied

Your baby has gone down the plughole
 Gone down the hole for the plug
 she was far too small
to be bathed at all,
 and should have been washed in a jug…

your baby is perfectly happy
he won’t need a bath any more
he’s floating away down the drainpipe
 not lost but gone before

Leave a Comment » | design, infringement, Intellectual Property, IPO, Israel Court Ruling, israel design ruling, Israel IP, Uncategorized | Permalink
Posted by Dr Michael Factor

Miss Sexy and Miss Sixty not Confusingly Similar

August 10, 2011

Fronsac applied for Israel TradeMark 205879 for Miss Sexy. Iris Line who have a registered trademark for Miss Sixty, opposed the registration. Both marks are for clothing in the same class, but the list of goods is somewhat different.

Iris Line claimed that their mark is well-known, with sales of over $40,000,000 a year worldwide, and that the word sexy is descriptive and lacks inherent distinctiveness. They also claimed that the proposed mark offended public sensibilities.

The Arbitrator of Intellectual Property, Ms Shoshani Caspi ruled that the opposers had failed to establish that their mark fell into the category of a well-known mark and that the nature of the words sexy and Miss were so lacking in distinctiveness that the combination also was.  She also decided that the Israel public would not find the brand Miss Sexy offensive to their sensibilities.

I hope those ladies old enough to be my mother will not be offended by my concurring with Ms Shoshani Caspi that a registration for Miss Sixty is not sufficient grounds to prevent a different applicant from receiving a trademark for Miss Sexy, despite the same class of goods (clothing) and the similar appearance and sound of the two marks.

It seems that for women’s clothing the word Miss is less than distinctive and the meaning of the two words Sixty and Sexy, though in English which is not the first language in Israel, are sufficiently well-known to prevent confusion.

Leave a Comment » | IPO, Israel IP, Israel Patent Office Rulings, Israel Trademark, trademarks | Permalink
Posted by Dr Michael Factor

Wrangling over Procedure vs. Substance

August 9, 2011

When Israel trademark application number 218503 for Rodeo in Class 25 (apparel) filed by Weiss Brothers Manufacturing and Marketing LTD published, Wrangler Apparel Corp filed an opposition via Shlomo Cohen Law Offices.

The mark in question is pictured alongside.

An interim ruling by the Arbitrator of Intellectual Property, Yaara Shoshani Caspi, has now published. The ruling addresses the issue of whether, once the sides have agreed to a ruling based on the contents of the file, whether the opposer can file additional evidence.

Ms Caspi seems to accept the principle that in certain circumstances, the adjudicator can stray from the ordinances and allow additional evidence to be submitted, but in general, evidence should be submitted in one go, within the time limits. In this case, she noted that the issuance of the mark has been delayed by a couple of years due to the opposition proceeding, and the opposer has tried to submit additional evidence 7 months after the deadline for so doing.

Hinting at procrastination in bad faith, Ms Caspi ruled that there is an onus on the opposer to justify the deadlines and straying from procedure, which hasn’t been met. She considers the request merely an attempt to improve their case and refused to allow Wrangler to submit additional evidence, and has given them 30 days from the issuance of the ruling to submit their summary.

COMMENT

Since Aharon Barak’s presidency of the Israel Supreme Court, there has been a tendency to allow substantive issues to over-rule procedural ones, and one might have expected the evidence to have been allowed with costs awarded to the applicant to compensate for the deviation in procedure.

As a self-confessed formalist (no doubt reflecting my education is England, and having studied engineering, physics and  Talmud before Israel Law) I am pleased that this request was rejected and that the rules and regulations are given due weight. Furthermore, it is possible, as Ms Caspi  suspects, that the opposer or his counsel are indeed guilty of time-wasting shenanigans. However, it is worth noting that the mark is somewhat reminiscent of Wrangler’s who promote rodeos, and in trademark issues, there is no such thing as closure. It does make sense viewing all the evidence and then ruling to avoid cancellation proceedings and parallel motions through the courts.

It is not impossible that the Wrangler or their counsel were simply disorganized and the evidence should be heard.

The moral of the story here is for opposers to ensure that they get their evidence together promptly and submit it all in good time.

Leave a Comment » | IPO, Israel IP, Israel Patent Office Rulings, Israel Related, Israel Trademark, trademarks | Permalink
Posted by Dr Michael Factor

Israel Patent Office Publishes Report on 2010 Activity

July 29, 2011

The Israel Patent Office has just published a report covering its activity in 2010.

The report, in Hebrew, is available from here: http://www.justice.gov.il/NR/rdonlyres/C6ACFC67-FFF0-4D16-A8C3-DCFD0154D82E/0/2010.pdf

There are 45 pages of statistical data that contains few surprises, bound in a blue cover with a slightly corny lightbulb image.

Much of the comparative material, showing how the IPO compares with patent offices in other jurisdictions, and the number of patents filed per GDP and per population are found in the OECD report, on WIPO’s website, and in a paper I wrote together with Jeremy Ben David and which was published in WIPR a couple of months ago. Nevertheless, the report is comprehensive and compares favorably to the odd table or graph that the patent office has traditionally published.

There is some data on oppositions that has never been presented before and also comprehensive ranking tables showing where incoming filings originate.

The document carries two introductions, one from newly installed commissioner, Adv. Asa Kling, and one from his predecessor Dr Meir Noam. We weren’t surprised to see that each commissioner has lauded his predecessor / successor. However, since the document relates to the end of Dr Noam’s tenure, and before Adv. Kling took over as commissioner, this seems appropriate, if a little tiresome. Actually to be fair, 2010 was a good year for Dr Noam, whose achievements were many.

Of note, there is apparently on going consultation between the patent office and the Ministry of Justice regarding a Design Law to replace the 1924 Ordinance inherited from the British mandate, which is still in force.

We were surprised to learn that Brazil is a major filer or design registrations in Israel. Indeed 109 of the 423 design registrations originating from abroad came from Brazil, ahead of everywhere else including the US. Apparently, this is due almost exclusively to H Stern, a Brazilian jewelry firm with many outlets in Israel. Apart from jewelry, Israel design registrations were filed mostly for clothing, building materials, ornaments and food containers. In total, 1622 design applications were filed, which is, however, less than in any of the years 2005-2009.

There were a total of 8017 trademark applications filed into Israel in 2010, which is less than any of the years 2005-2009 and nearly 2500 less than 2008.

Protocol Madrid for the multi-national registration of trademarks came into force in Israel in September 2010, and in the last quarter of the year, some 463 filings were made into Israel via the protocol, and 37 international applications originating in Israel were filed.

In total, some 7266 patent applications were filed in Israel in 2010, which is up from 6780 in 2009, but still below the 2006-2008 levels which peaked, in 20o7, at 8064.  Most of these applications were Paris/PCT filings or divisional applications, claiming priority from earlier applications. The number of new applications first filed in Israel was 1044, which is the smallest number for a decade. It seems that more and more Israeli applicants are first filing in the US, either as regular applications, or are filing US provisional applications.

There was a lot of patents examined and allowed, but problems in publication delayed them issuing and probably contributed to the low number of oppositions filed, which, at 22, is up from 2009 when only 20 were filed, and from 2001 when 21 were filed, but much lower than the other years of this millennium.  We suspect however, that a number of cases examined in 2010 only published in 2011 and there will be some additional oppositions (indeed, I am handling one such case together with Adv Lewin from our office).

Some 41% of patent filings into Israel are computer/electronics related. 31% are chemistry (mostly pharmaceuticals), 17% biotech and 11% mechanical or telecommunications related. (I am not sure why telecommunications is related to mechanical and not to computer/electronics. I suspect it is an anomaly dating back to the mechanical telegraph or to the telephone made of two cups connected by a taut string). The Israel Patent Office receives a disproportionate amount of high-tech and pharmaceutical patent filings compared to those in traditional industries. This seems to reflect the fields where Israeli industries are perceived by competitors as being a threat.

In the end of 2009, Dr Noam initiated a fast track for ‘green’ patent applications. Some 22 attempts to have applications recognized as green were made during the year, and of these, 16 were accepted for the fast track, and 6 were refused. In the pie-chart summarizing this information, the 262 degree slice was coloured green, and the remaining 98 degrees was coloured orange. The significance of this colour was not apparent.Israel is a noticeable user of the PCT system in absolute terms, and is the largest user in terms of population. I suspect that this is because of the small local market, and Israel’s favorable trade relations with the US, Europe and the far East.

It seems that IP activity in Israel, both from local entities and from foreign applicants was down in 2010 in patents, designs and trademarks. This does not come as a surprise,  as we’ve felt the drop in work. It is little comfort to know that Israel weathered the recession better than many other economies, and that patent, design and trademark filings are down everywhere, except for China.

However, we note that the patent office has been aggressively attacking backlogs and examination pendencies are down as well.

We hope that the 2011 data will be more positive!

Leave a Comment » | Intellectual Property, IPO, Israel, Israel IP, Israel Patent, Israel Patent Office, opposition, Patent trivia, Patents, PCT, pharmaceuticals, pharmaceuticals and Biotechnology, Provisional patents, telecommunications, trademarks | Permalink
Posted by Dr Michael Factor

Non-Announcement Re Next Sitting For Wannabee Israel Patent Attorneys

April 4, 2011

Following a deluge of queries, the Israel Patent Office has issued a non-announcement to the effect that the date of the forthcoming patent attorney exams has not been fixed and at the beginning of May they will announce when the next sitting will be and that candidates should be patient and not nag.

The professional examinations consist of a written paper to examine drafting ability and an oral exam (viva) before 2-3 examiners, of which not more than one may be a patent attorney. The regulations call for the Exams to be held three times a year, but candidates who fail are not allowed to try again less than six months from the exam they fail, so there is a long-standing practice of holding the exams at just over six month intervals.  We presume that the state of affairs with an acting Commissioner of Patents and an appointee who has not yet been inaugurated or whatever they do to him, is the reason for the delay.

I’ve been approached by a few rookies and a couple of organizations asking if I would like to run a course. Nothing has been arranged yet, but if there are at least a dozen candidates interested, I don’t mind doing this, for a modest fee…

Leave a Comment » | IPO, Israel, Israel Patent Office, Uncategorized | Permalink
Posted by Dr Michael Factor

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