361

February 8, 2016

361

Dalitex LTD own Israel Trademark Numbers 192322, 102323 and 192324 all for stylized marks for “361” as shown. The mark covers Protecting clothes (vests) and bullet proof vests; all included in class 9; Bags, including rucksacks, backpacks, carrier bags, suitcases and pouches; all included in class 18, and Clothing and footwear, including shoes and socks, coats, storm suits made of cloth and synthetic materials such as nylon and polyester; headgear; all included in class 25.

Sanliuyidu (Fujian) Sports Goods Co LTD filed a cancellation proceedings on 26 October 2015, using the address of record in the register.

The period for responding as per regulations 37 and 71 of the 1940 Trademark regulations passed and the mark owners did not respond.

Consequently, Sanliuyidu (Fujian) Sports Goods Co LTD have two months to file their evidence and then are entitled to a hearing, and are requested to inform the Patent and Trademark Office if they intend having such a hearing.

Interim Decision re Israel Trademark Numbers 192322, 102323 and 192324 “361”, Ms Jacqueline Bracha, 14 January 2016.

 


Can a Patent Term be Extended in Israel on the Basis of a Patent Term Adjustment in the US?

February 8, 2016

calendar

Most patents are renewable up to 20 years from filing. The exception is basic pharmaceutical patents which may be renewed until 25 years from filing to ensure at least 14 years of post regulatory approval in Bolar countries.

The Israel Law relating to pharmaceutical extensions is complicated and has been amended several times. It is based on the Hatch Watchman Act in the US, and was legislated in Israel under a great deal of pressure from the United States. The Amendment itself has been amended a couple of times. Because of the large sums of money involved, drug development companies are willing to spend a small fortune to obtain extensions and Unipharm and Teva frequently oppose such extension periods.

Novartis applied for an extension for IL 154465 titled IL-1BETA BINDING MOLECULES AND USE THEREOF IN THE PREPARATION OF PHARMACEUTICAL COMPOSITIONS AND MEDICAMENTS.

The active ingredient is known as Canakinub, and this received regulatory approval in October 2010 under the trade name ILARIS.

In this instance, regulatory approval preceded allowance of the patent so Applicant requested an extension of the period for requesting an extension of the patent as defined in Section 61(XV). The patent was granted on 1 March 2011 and following this, the patentee requested an Extension.

It transpired that requests for extensions were filed in the US and in most of the European countries that can be used as the basis for a request for patent term extension as detailed in Appendix B to the amendment.

In the US, there are Patent Term Extensions (PTEs) which may be used as the basis for requesting a corresponding extension in Israel. But there are also Patent Term Adjustments (PTAs) which are not to be confused with Parents and teachers Associations considered different things entirely. The PTA is granted to compensate for delays attributed to patent office tardiness in the USPTO. They do not have anything to do with ensuring a term of enforcement from regulatory approval.

In this instance, the Patent Term Adjustment exceeded the theoretical Patent Term Extension so no Patent Term Extension was granted. In other words, there was regulatory approval in the US which starts the clock for usage. However, the corresponding US Patent never was extended by a PTE. The Israel Examiner therefore rejected the request to grant a PTE in Israel as there was no PTE in the US to consider under Section 64(IV)5.
Novartis were not happy with this decision and requested a hearing before the Commissioner on 17 February 2015. They submitted written arguments on 22 June 2015, a hearing was held on 22 July 2015, and on 11 August 2015 a supplementary affidavit was submitted by a Ms Leslie Fisher (maybe that should be Lesley?).

After the 11 amendment to the Israel Patent Law of 27 April 2014, Novartis requested an extension based on the Notice of Final Determination:

“A determination has been made that U.S. patent No. 7,446,175, claims of which cover the human biologic product Ilaris® (canakinumab), is eligible for patent term extension under U.S.C. § 156. The period of extension has been made determined to be 0 days.

The period of extension, if calculated using the Food and Drug Administration determination of the length of the regulatory review period published in the Federal Register of December 9, 2010 (75 Fed. Reg. 76739), would be 205 days.

Because the patent term adjustment awarded to U.S. Patent No. 7,446,175…of 1,131 days extends the original expiration date to September 24, 2024, which is beyond the 14 year exception of 35 U.S.C. 156(c)(3), the term extension is 0 days…”

(the underlying is by the Commissioner Assa Kling (we suspect that Novartis would have preferred not to draw attention to it).

Essentially what happened was that the US patent was in force for over 14 years due to the Patent Term Adjustment, so no Patent Term Extension was required.

The commissioner noted that the PTE was zero days and that section 64(I) of the Law states explicitly that an Extension of the basic patent relied upon has to be for one day or more and that this is referred to in the US as a Patent Term Extension (PTE) and in Europe a Supplementary Protection Certificate (SPC).

The Applicant has a different understanding of the correct interpretation of the Law based on its purpose and the legislative’s intent and argued that there was a lacuna. However, the differences between PTEs and PTAs was discussed in a ruling concerning a patent term extension for IL 181673 to Genetech.

The law, the previous decision and common sense implies that if the drug has patent protection of 14 years from first regulatory approval it does not deserve a patent term extension in Israel. Furthermore, the Commissioner referenced the understanding reached between Israel and the United States

“A reference PTE which results from marketing authorization delays means any period extending the Basic Patent by one or more days, up to the maximum period allowed under the Patent Act.
“…However, if a reference PTE has not been granted (either as an interim or final PTE Order) in the United States and at least one EU reference country prior to the expiration of the underlying Basic Patent in Israel, then no PTE (interim or final) shall be granted in Israel in respect of that Basic Patent.”

This supports the Law as formulated and the Commissioner’s understanding.
The rejection of the request for a Patent Term Extension in Israel was upheld despite the Applicant having been given an opportunity to present his case before the commissioner as per section 152 of the Law.
COMMENT
I am convinced by the ruling. I suspect it may be appealed though.


Angel’s Bread

February 8, 2016

Angelbread

No, this decision has nothing about Bread of Heaven which is more formally known as Cwm Rhondda, or even about Manna, the fabled bread eaten by the Israelites after the Exodus from Egypt on the way to the Holy Land.

Shlomo A. Angel LTD in Jerusalem is Israel’s largest bakery, and is also the largest bakery in the Middle East. It supplies 275,000 loaves of bread and 275,000 bread rolls a day. The bakery also carries a range of 250 cakes and biscuits, including roggeluch, of course.

There is a smaller bakery called Engel Y. Pattisserie and Baking Goods LTD.
The two bakeries each submitted trademark applications that included the word angel or engel in Hebrew  (אנגל) where vowels are not written, and whether a g is a soft g as in giraffe or a hard g as in gamma is generally indicated by a dagesh or dot in the letter but also not shown in words printed without vowels. Actually, Yemenites are the only group that pronounce the jalet sound in regular Hebrew. Angel writes their name with an apostrophe indicating that it is a foreign word, pronounced Anjel.

Due to possible likelihood of confusion regarding the origin of good thus marked, a competing marks procedure under Section 29 of the Israel Trademark Ordinance is called for. Under Section 29, the Israel Patent Office considers the application dates, the extent of usage and the equability or otherwise of the behaviour of the applicants in order to determine whose rights are stronger and which marks should be examined first. Only then, is the eligibility of the mark under Section 11 considered.

In this instance for some reason, probably a mistake on the part of the Trademark Division, b0th competing mark objections and substantive objections based on previously registered marks were raised against the applications submitted by Angel Y. Pattisserie and Baking Goods LTD.

Shlomo A. Angel LTD’s representatives suggested that it would be more efficient to consider the eligibility of the marks first, and only then, if both marks are considered eligible, to have the competing marks procedure to consider which applicants pending marks should be registered first.

The advantage of first looking at basic eligibility is to avoid wasting time and resources on a competing mark decision only to have the prevailing mark then refused. However, the problem with this approach is two-fold. Firstly, even if one or both pending marks are considered eligible sans consideration of the other competing mark, once the competing mark procedure is initiated, the mark that wins that procedure can then be cited against the other mark, so the substantive examination occurs twice. Secondly, having a hearing to decide whether to follow or deviate from procedure is itself time-confusing. Nevertheless, if both parties agree, it may make sense.

In this instance there was no consensus between the parties, to suspend the competing marks procedure and to first examine the marks themselves. This leads to the question of whether it is ever legitimate to deviate from the procedure set out in the relevant Patent Office Commissioner’s Circular, and to decide on registerability first, and competing marks issues afterwards.

In this instance, both bakeries filed a number of trademark applications which were copending.  On 26 May 2014, Shlomo A. Angel LTD filed Israel TM Application Number 265729 for Conditoriat Angel (A conditoria קונדיטוריה is a patisserie in Hebrew, so this means Angel’s Patisserie). The mark covers flour, grain products, bread, baked goods, sweets, yeast and baking powder in class 29. On 19 October 2014, Shlomo A. Angel LTD filed Israel TM Application Number 269159 and 269160 for Angeli and Angelino for the same list of goods.

On 24 November 2014, Conditoriat Engel Y. Baked Goods LTD. Filed Israel TM Application Number 269996 for Engel Cookies in class 29, also covering flour, and grain based goods, baked goods and sweets and Israel TM Application Number 269997 for the same goods.
In addition to the competing goods procedure, Section 11(9) objections were raised against Conditoriat Engel Y. Baked Goods LTD. on account of earlier marks to Shlomo A. Angel LTD that included Angel’s Bakery Jerusalem, Angel Oranim, Women’s light bread, phyto bread, Angel’s bread in the French style and Angel 100. So if Conditoriat Engel Y. Baked Goods LTD.’s marks were to win the competing marks procedure and be examined first, they could subsequently be refused on grounds relating to previously registered marks owned by Shlomo A. Angel LTD.

The competing marks procedure is thus arguably flawed in that it relates to co-pending marks without taking into account previously issued marks.

Shlomo A. Angel LTD requested that the applications filed by Conditoriat Engel Y. Baked Goods LTD should be first examined on their merits, possibly rendering the competing marks procedure moot.

Conditoriat Engel Y. Baked Goods LTD disagreed. They requested that the competing marks procedure should occur first, as per the relevant circular, since the competing marks procedure started by the commissioner indicates an assumption of validity on the merits, citing BAGATZ 228/65 Fromein and sons vs. Pro Pro Biscuits from 1965, which was based on Section 17 of the old ordinance which corresponds to section 29 of the current version. There is was stated:

“the question of which of the competing marks takes precedence for examination, is a court ruling that is final, whereas the question of registerability, is one that at that stage, the Commissioner neither made or was able to make. Deciding which mark is preferable in the competing marks proceeding is “subject to other requirements of the law”. Thus a section 17 (now 29) proceeding does not determine which mark is registered, it is based on a working assumption that marks are registerable…”

The Commissioner did not consider that Fromein was relevant to the current case. In Fromein, the side prevailing in the competing marks procedure was examined first, allowed for publication and then successfully opposed. The issue was whether the proceeding marks ruling was to be understood as indicating that the mark was otherwise allowable and the answer was that it was not. In Fromein, the Commissioner’s competing mark decision was not based on consideration of the mark on its merits and does not indicate that the mark was otherwise allowable. Furthermore, citing BAGATZ 450/80 EL Khadaer, “there is nothing to prevent the Examiner preferring one mark to be examined first under a Section 29 proceeding when, based on the evidence, he does not consider either mark may be registered on its merits. This indicates that the Examiner CAN choose to examine the marks on their merits within the Section 29 procedure. This also indicates that despite a question regarding registerability on the merits of one of the marks having been raised, the Commissioner may choose to continue to discuss which mark takes precedence.”

Nevertheless, the Commissioner was not happy about allowing one mark to take precedence in a competing marks procedure to have the other mark refused, if subsequently the mark taking precedence were to be refused on its merits requiring the other party to resubmit and cited the competing marks ruling regarding 1667390 and 166845 Ilan Danino vs. Keshet Transmissions LTD from 26 December 2005 which came to a similar conclusion.

Clearly, it is inefficient to hold a competing marks ruling only to subsequently refuse on its merits the mark that takes precedence. The Circular allows the parties the opportunity to agree for a preliminary ruling on the registerability of the marks, and this assumes that where the parties do not have strong contrary feelings, such an eventuality will occur, and where there are earlier registrations, the issue of distinguishing features will be considered.

However, as occurred in this case, where one party’s earlier marks were cited against the pending mark and a Section 29 proceeding were initiated together, the parties have different interests regarding the order of proceedings and may not agree.
Reserving the right to raise registerability issues before himself, instead of before trademark examiners, the Commissioner ruled that the section 29 proceeding should take place but before other issues are addressed, Conditoriat Engel Y. Baked Goods LTD were given 30 days to respond to the registerability objection based on the earlier Angel’s marks. Furthermore, to avoid things being dragged out, no extensions to the substantive examination would be allowed apart from in exceptional cases.
Ruling by Asa Kling, Angel vs. Engel, 24 January 2016.

COMMENT

This is not a bad decision from a procedural point of view, but it does not really address any of the questions. The issue is efficiency for all concerned, so why not revise the Circular to give the patent office authority to initiate a competing marks procedure earlier or later in the examination depending on previously registered marks?

Alternatively, why not decide whether or not a proceeding marks procedure is warranted BEFORE issuing objections on other grounds?


Circular 19/2012 Updated to Reflect On-line filing, but what about the Abstract?

January 28, 2016

abstract painting

Now that the Israel Patent Office is set up for and accepts on-line national phase entry of patent applications, Applicants can either file on paper or directly on line. The relevant Circular 19/2012 has been updated accordingly.

One can upload the Specification, Figures, Claims and genetic sequence if relevant using fields in the on-line interface.

COMMENT
My second attempt at filing on line went like a dream. I do, however, have one little problem: what about the Abstract?

In the old days, Applications in Israel did not have Abstracts and the Examiner, on allowing the application would write an abstract to accompany a representative image in the patent office journal where the allowance was published for opposition purposes.

More recently, the Applicant (or his representative) was requested to prepare an abstract, which was typically not a problem as the abstract from the PCT or priority document was used.

Now abstracts are sometimes like abstract works of art. One can read anything into them, and the author’s intention and the litigator’s understanding may both be equally legitimate which is one reason that statements made in the Abstract are rarely given much weight.

The problem I have is that the interface does not have a tab for uploading the Abstract and the updated Circular does not refer to this either.

One could submit the abstract as the last page of the description or appended to the claims. Not knowing what to do, I used the genetic sequence if relevant tab to upload a file labeled Abstract and assumed that someone in the patent office would realize that the attachment was not a genetic sequence but an abstract and deal with it accordingly. I thought that fairly quickly the Israel Patent Office would add a further field for uploading the Abstract as the PCT Easy software has one. Now I am not sure. Maybe the Examiner is going to write one as in the old days? Maybe with greater classification and full text searches the abstract has been deemed unnecessary? Does anyone know? Does anyone except me care?


M.N. 81 Canceled

January 27, 2016

division

We were not surprised that following the Genentech decision, The Commissioner circular M.N.  81 was canceled and later circulars that referred to it were amended.

This means that anyone (not just Genentech) can file a divisional from what is itself a divisional patent application in Israel.

We expected this to happen as one has to have common ground rules for all applicants.

There is, however, a downside to this. In cases that have a tendency to go litigious, such as with pharmaceuticals, there is an incentive on the applicant to keep a divisional application alive long after the parent application issues, so that the claims thereof can be amended following litigation on corresponding patents abroad, and judicial rulings concerning wording, claim structure and the like. This makes attacking such patents difficult as they become a moving target.

On grounds of ultra vires, I was unhappy with M.N. 81, but I do feel that on substantive grounds there is room to amend the law. I just feel that it requires the Knesset to do so. Possibly claims in the parent that were canceled due to plurality of invention objections should be allowed to be reintroduced, but I am not sure that allowing anything arguably based on the specification to be reintroduced at any time by keeping a divisional application alive is necessarily a good policy.

Note, there is a dirty word in Israeli legal circles for people with views like me. I am dismissed by the crusader crowd as being a ‘formalist’. I am aware of the arguments that we need judicial fiddling to protect democracy. However, I see them as Orwellian, and inherently dangerous.


IPad Mini, IPad Air and MI Pad

January 20, 2016

Apple Inc filed Israel Trademark Application Number 261500 for IPAD MINI and Israel Trademark Application Number 261449 for IPAD AIR on 12 November and 20 November 2013. both in class 9 for Handheld mobile digital electronic device comprising a tablet computer, electronic book and periodical reader, digital audio and video player, camera, electronic personal organizer, personal digital assistant, electronic calendar, and mapping and global positioning system (GPS) device, and capable of providing access to the Internet and sending, receiving, and storing messages and other data.

Subsequently, on 14 May 2015, Xiaomi Singapore Pte. Ltd filed Israel Trademark Application Number 270078 for Mi Pad. The mark covers Portable and handheld electronic devices for transmitting, storing, manipulating, recording, and reviewing text, images, audio, video and data, including via global computer networks, wireless networks, and electronic communications networks; tablet computers, electronic book readers, periodical readers, digital audio and video players, digital camera, electronic personal organizers, personal digital assistants, electronic calendars, mapping and global positioning system (GPS) devices; computer peripheral devices; computer and portable and handheld electronic device accessories, namely, monitors, displays, keyboards, mouse, wires, cables, modems, disk drives, adapters, adapter cards, cable connectors, plug-in connectors, electrical power connectors, docking stations, charging stations, drivers, battery chargers, battery packs, memory cards and memory card readers, headphones and earphones, speakers, microphones, and headsets, cases, covers, and stands for portable and handheld electronic devices and computers; computer software for the development of content and service delivery across global computer networks, wireless networks, and electronic communications networks; downloadable audio works, visual works, audiovisual works and electronic publications featuring books, magazines, newspapers, periodicals, newsletters, journals and manuals on a variety of topics; computer software for transmitting, sharing, receiving, downloading, displaying, transferring, formatting, and converting content, text, visual works, audio works, audiovisual works, literary works, data, files, documents and electronic works via portable electronic devices and computers; computer game programs; downloadable music files; downloadable image files; video telephones; navigational instruments; screens [photoengraving] in class 9 and Telecommunication access services; communication by computer; transmission of data and of information by electronic means, broadcasting or transmission of radio and television programs; provision of telecommunications connections to computer databases and the Internet; electronic transmission of streamed and downloadable audio and video files via computer and other communications networks; web casting services; delivery of messages by electronic transmission; streaming of video content, streaming and subscription audio broadcasting of spoken word, music, concerts, and radio programs, broadcasting prerecorded videos featuring music and entertainment, television programs, motion pictures, news, sports, games, cultural events, and entertainment-related programs of all kinds, via computer and other communications networks; providing on-line bulletin boards for the transmission of messages among computer users concerning entertainment in the nature of music, concerts, videos, radio, television, film, news, sports, games and cultural events; communication services, namely, providing users access to communication networks for the transfer of music, video and audio recordings; teleconferencing services; providing Internet chatrooms; voice mail services; transmission of digital files.  in class 9.

Since Apple Inc.’s marks have not yet issued, a competing marks procedure was instituted and both parties are invited to a hearing before Ms Jacqueline Bracha on 1 February 2016 to states their cases.


IL 214003 to Moshe Binyamin Remains Closed

January 17, 2016

Diy brain surgery.jpg      magic bracelet

In December we reported that a private inventor, Moshe Binyamin had filed a request for his closed patent application be reopened. The case was considered abandoned when the inventor failed to respond to the Notice Prior to Examination.

The inventor represented himself. Generously, the Deputy Commissioner Ms Jacqueline Bracha gave the applicant seven days to file a detailed Affidavit as to why the case was abandoned. Since the case had published and over a year had passed since it was abandoned and the applicant failed to provide an adequate explanation for the case going abandoned and did not attend a hearing, The case remains closed.

COMMENT
It seems that Ms Bracha was more than generous towards this inventor. Representing oneself in legal matters is not usually a good idea.

The invention is for some sort of bracelet with magical health powers. This is a very good idea. As the revival of the application was rejected it remains in the public domain. Unfortunately it doesn’t seem to be fully enabled and I doubt its efficacy.


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