Was the 7th Amendment to the Israel Patent Law, Concerning Drug Term Extensions Unconstitutional?

November 24, 2015




Back in 2004, following corresponding legislation in the US (Hatch Waxman Act) Israel amended their Patent Law to Provide for patent term extensions with what is known as the third amendment the Israel Patent Law. This creates a regime wherein during the period of patent protection genetic players may develop synthesis routes and seek regulatory approval for genetic versions of patented drugs, and, to ensure at least 14 years of post regulatory approval sales under a monopolistic patent regime, the basic patent may be extended by up to 5 years.

The third amendment was ambiguous and in an ex-partes ruling affecting three patents in what is now known as the Novartis ruling, Acting Commissioner Israel Axelrod understood that the amendment was designed to give a real advantage to the drug development companies and they could choose the country to base their patent term extension on.  This was not what the Knesset intended and the amendment was again amended in what is now the Seventh Amendment of the Israel Patent Law, to tidy up this and other ambiguities of the original amendment.

In 2006, under intense pressure from the US who put Israel on their special 301 Watch List of countries not properly protecting Intellectual Property, the State of Israel amended their Patent Law again.

The Seventh Amendment has retroactive effect.  The Patent Term Extension laws have, meanwhile, been amended again (Eleventh amendment to the Law). However, this ruling relates to the 7th amendment.

The Original Ruling of the Commissioner of Patents


Since the 7th amendment provides a shorter period of protection and since it is retroactive, the Association of Israel Industrialists appealed the original patent term extension concerning Israel Patent Number 110956 for Ezetrol, a drug that is used to lower cholesterol levels in blood. In consequence, the Current Commissioner of Patents, Asa Kling, shortened the previously granted patent term extension for of 1014 days to 496 days.

Merck appealed the Commissioner’s decision to the District Court on constitutional and other grounds and argued that the seventh amendment should either be interpreted narrowly so that property rights already granted by law cannot be rescinded, or that the Seventh amendment should be struck as unconstitutional.

Ezetrol is a drug that is used to lower cholesterol levels in blood. Israel Patent Number 110956 to Merck Sharp & Dohme Corp. (formally called Schering Corporation) is exclusively licensed to Merck & Co. Inc., whose daughter company in Israel has the rights to distribute the drug in Israel.

The Commissioner of Patents first ruled that the basic patent which was due to expire on 13 September 2014 would be extended and would expire on 23 June 2017. However, this period of 1014 days was subsequently shortened to 496 days and the drug will therefore expire on 22 January 2016. See here.

The extension itself issued under the then version of the Law (third amendment) on 22 September 2005. The commissioner’s revised ruling was based on a submission of 7 January 2013 from the Association of Israel Industrialists requesting  to shorten the extension period based on the seventh amendment of Section 64K from 2006.

64K states that the Commissioner may, on application by a person who is not the holder of the basic patent or of an exclusive license, cancel an extension order, if he concludes that there are grounds on which the grant of the extension order can be opposed; the Laws of prescription shall not apply to an application for cancellation under this section.

According to the Association of Israel Industrialists this shortening of the period of protection was legitimate since Section 22 of the amendment explicitly makes the amendment retroactively applicable.

Section 22(a) states that the instructions of the original Law, as phrased, will apply to extension requests and to extensions given before the amendment enters into effect, as long as the basic patent that was the basis of the patent term extension request is still in force. Section 22(b) notes that the above is true, however extension orders issued prior to the amendment would not lapse merely for failing to fulfill the requirements of Sections 5 or 6 of 64D of the main law, as detailed is Section 3 of this Law.

According to the Association of Israel Industrialists, since the basic patent had not lapsed when they petitioned the Commission on 7 January 2013, the Commissioner should apply the amended Law. The Commissioner accepted this argument and therefore shortened the patent term.

The patentee disagrees. They consider that since an extension was given on 22 September 2005, they had a property right for the extension period as ruled, and despite the seventh amendment, this right was inviolate for two reasons:

  1. Property is a basic constitutional right under the Basic Laws of 1980 and so it is appropriate to interpret new laws in a way that prevents retroactive cancellation of property. Applying the 7th Amendment retroactively would be unjust and would certainly destroy property, certainty, stability and fair expectations, where the patentee has relied in good faith on an extension that has already issued. Relying on the issued patent, Merck claims has resulted in their planning, development, pricing and marketing of the patent protected drug. Applying the transition rules in a way that provides retroactive protection should therefore only be allowed in other cases, where doing so does not adversely affect rights already granted.
  2. If the amendment cannot be interpreted in such a manner that it excludes retroactive application of the law to issued patents, then it should be cancelled as it is unreasonable and thus contrary to Section 8 of the Basic Law, Human Rights and Freedoms 1980, under which one does not abrogate property rights unless doing so is in accordance with the basic values of the State of Israel, has a correct purpose and is proportionate, or covered by a specific law. According to the patentee, there is no fitting purpose that would justify applying the Law retroactively, and such retroactive application is not proportionate.

The patentee further claimed that the the Seventh amendment to the Patent Law should be canceled due to inherent flaws in the legislative procedure. Specifically the patentee alleged that the Knesset members were presented with a false picture of what the current Law was and the effects of the amendment, such that the amendment was based on a flawed understanding. This allegation was thrown out, as it was not proved, and there is a working assumption that the Knesset committees are open to hear all views of relevant parties and thus there is a working assumption that final amendments are based on a proper intelligent understanding.

The patentee also claimed that under Section 17c(i) of the Knesset Law סעיף 17(ג1) לחוק הכנסת the Commissioner of Patents should have made the Knesset a party to the opposition proceedings. This claim was also thrown out based on the precedent 4550/13 Bahat vs. Ministry of Health.

During the original hearing regarding shortening the patent term, the patentee argued that since there were no special regulations for calculating patent term extensions, the Amendment should be thrown out as inapplicable. The Commissioner rejected this position claiming that the calculation does not require special regulations since the Law itself explains the method of calculation making regulations for this unnecessary and superfluous.

In addition, Merck argued that even if the Commissioner considers his hand tied and that he has to apply the seventh amendment retroactively as per Section 22, he still should not understand this to mean that the patent would lapse on 22 January 2016 instead of 23 June 2017. Merck requested application of Section 64(9)a of the Law that states that “a patent term extension will remain in force, as per 64(10) for a period equal to the shortest patent term extension granted by a country offering patent term extensions (excluding temporary extensions) from a known country” [Bolar Country – MF]. The shortest term was the 497 day extension granted by the USPTO and should be the maximum extension.However, this was granted only on 23 August 2006 and didn’t exist on 22 September 2005 when the patent term extension issued.  Nevertheless, the patentee is entitled to 14 years post regulatory approval marketing under patent conditions from the earliest approval, which was Germany on 17 October 2016 and not 22 January 2016, so even if an extension to 23 June 2017 is no longer applicable, Merck was still entitled to a patent term extension until 17 October 2016.

All the above arguments were raised in the the original hearing regarding shortening the patent term before the Commissioner of Patents who threw them all out, ruling that the patent should lapse on 22 January 2016. Citing the patent term extension in IL 83148 to Roche (13 June 2007), The Commissioner considered that any interpretation of the transitional period to cases where the patentee’s rights were not damaged would empty the legislation of meaning. Furthermore, the Commissioner cited a Supreme Court precedent relating to retroactive taxation of the findings of oil exploration, that made it clear that retroactive legislation that canceled property rights though problematic, were, nevertheless possible.

As detailed in Calne , the Commissioner considered that the 7th Amendment was carefully crafted to strike a balance between the different interests and was in accordance with the limitations of the Basic Laws, and, citing 4550/13 Bahat vs. Ministry of Health  stated that the Courts would only intervene in Knesset legislation in extreme cases, and not where the Knesset merely regulates the market and economy, and that the courts should act with restraint. Furthermore, the transitional legislation makes clear what the Knesset chose from the various available options.

The Commissioner considered that there was a lack of evidence supporting assertions of the patenteee that Knesset were unaware of the patentee’s interests when amending the Law. Furthermore, the protocols of the Knesset committee meetings from 11 October 2005, 7 November 2005 and 12 and 13 December 2005 indicate to the contrary.

Finally, arguments to use the German patent as the basis of the extension were rejected by the commissioner as this would imply applying the eleventh amendment before it was legislated.

The Appeal

the appeal

In their Statement of Appeal, Merck reiterated their arguments as previously submitted to and rejected by the Commissioner.

Judge Greenberg considers that these arguments may be variously categorized as (i) interpretation of the Law, (ii) Constitutional arguments, and (iii) technical arguments.

The Association of Israel Industrialists requested that the Commissioner’s ruling be upheld, and accused Merck of submitting a creative interpretation that did not sit with the wording of the Law, and the retroactive nature of the Law clearly applied to both procedural and substantive issues. The Seventh amendment was not a new judicial regime but merely a clarification of the Knesset’s intent regarding the third amendment. Although the eleventh amendment was not retroactive, it is clear that the seventh amendment was.

As to basing the extension of the US, it was Merck who decided to use the US as the country of record, selecting this as per the third amendment as interpreted by Axelrod, and the Commissioner was right to consider the US extension only, and not to relate to the German case.

The Ruling

After considering the submissions of the parties, Judge Greenberg concluded that the Appeal should be partially accepted. As far as the patentee’s assertion that the transition clauses of Section 22 should only be applied procedurally but that the retroactive application of the Law damaged a granted property right and should not be applied, this was unacceptable. Laws are generally expected to apply henceforward. However, this generalization can be challenged when explaining the Law. In this instance, Section 22 does not allow a from now onwards explanation since it states explicitly that the guidelines of the main law, as legislated, shall apply to pending patent term extensions and to patent term extensions that have been issued as long as the the basic patent is still in effect.

Thus it is clear that the amendment to the Law may be applied retroactively to already issued extensions. The Amendment is clear and is not open to creative interpretation.

Furthermore, Section 22b states that new considerations for granting a patent term extension could not be applied retroactively. Thus it is clear that the legislators were aware of the difference between legitimate challenges to property rights and those that were illegitimate.

This raises the issue of the legislator’s intention in the amendment. The Association of Israel Industrialists argued that the purpose of the retroactive nature was to repair the damages from the third amendment to prevent the Commissioner’s interpretation in Novartis, which the legislators considered was contract to the intention of the Law, and resulted in the 7th amendment.  The patentee disagrees and claims that the amendment had nothing to do with Novartis which was not appealed and the Association of Israel Industrialists never tool any steps to change this ruling. Rather, the Association of Israel Industrialists ran to the legislative to amend the Law, shifting the balance away from the drug developers and in favour of the generic companies it represents.

The Association of Israel Industrialists’s position in this regard is persuasive to the judge. The Appellant (patentee) has not given any alternative explanation for the retroactive effect of the amendment and so has to claim that the legislative committee was mislead. These claims of of flaws in the legislative process require some evidence which is not there. Rather, as the Association of Israel Industrialists has demonstrated, the Committee considered a wide range of perspectives from the relevant players and this leads to an assumption that the they did their job properly and the amendment is based on a full consideration of the conflicting concerns.  Consequently, the Law is exceptional in that it consciously and intentionally retroactively changes the duration of patents from their duration prior to the rule without the Appellant being able to explain this. Alternatively, one can conclude that the amendment was designed to correct a lacuna in the original amendment and the Appellant is wrong to consider this separate and independent from the Novaris case.

Thus contrary to the Appellant’s reading, the Judge refers to the words of explanation for the amendment (Proposal 187 from 5 July 2005, page 1002 which states that “The proposed legislation is designed primarily to to clarify issues that were raised in applying the Law concerning patent term extensions and the conditions for applying for them, and for the way of calculating the extension and when it terminates”.

Thus it is clear that the Extension was designed to clarify the way extensions were calculated and not to create a new calculation that contradicted that of Section 3. The Section 7 amendment was  did not relate to Novartis, it was only related to in the decision, only in the poorly worded Law itself, which led to the explanation given in the Novartis ruling.

Had the legislators had the skill to word the third amendment correctly to reflect their intention, as they did in the 7th amendment), the Novartis ruling would never have issued, and the law would have remained as it was.

This leads to two conclusions. Firstly, as far as explaining the Law is concerned, it is clear that the law should be interpreted such that the transition clauses are as stated and that the Legislators intended the calculation as stated in the 7th amendment, for previously extended cases as well because the purpose of the amendment was to correct them. Secondly, in the constitutional area, one can conclude that the amendment is in accordance with the limitations of Section 8 of the Basic Law Human Dignity and Freedom, since the retroactive application is proportional. This is also clear from the three tests that the courts use to review the proportionality of laws, and are appropriate in the case in question that relates to the transition period. See Supreme Court Appeal 1715/97 The Investment Agency of Israel vs. the Minister of Finance, P.d. 51 (4) 367 (1997), page 407.

The relevant law is Section 64(xi)a which states that  the extension will remain in effect as per section 10(x) for at least the shortest of the extension periods given for the basic patent, apart from temporary rulings where necessary.

The judge noted that according to the commissioner and to the respondent, once it is clear that the extension given in the US is the shortest extension,despite it issuing a year after the patent term extension, it is, nevertheless, the shortest extension. Whilst this interpretation is in accordance with the terminology of the Law which specifies the shortest extension without relating to when it issues, this interpretation means that a later decision can shorten an extension that has already issued.  Judge Ben-Zion Greenberger considered this interpretation untenable since it would make all patent terms unknown and would leave things open making it impossible for companies to plan.

Judge Greenberger also considers the extension granted in the US under the third amendment should not be applicable to the Seventh amendment in Israel since the proceeding is different, the rules for calculation are different. The Opposer of the extension does not need to search for the shortest period issued, as per the Commissioner’s ruling in the Novartis case.

On the basis of the above, the Commissioner’s reliance on the US patent to retroactively amend the Extension period was wrong since at the time of the application, it did not exist. Once the US extension is not considered, then there is consensus that the next shortest period was that issued in Germany. Judge Greenberger therefore restored the extension period to 17 October 2016 and ruled 25000 Shekels costs to the patentee.

Appeal against Commissioner of Patents Decision Concerning the Patent Term Extension for IL 110956  for Ezetrol, 10 November 2015.


Although retroactive legislation is problematic and uncommon. It does happen. The change in the Patent Law to allow internet publication of the journal is an example of retroactive legislation.

Interestingly, the Talmud recognizes this legal creation as הפקר בית דין הפקר, that a court can cancel property rights. It may be used to retroactively annul a wedding by making retroactively removing the ring given by the groom to the bride from the groom’s property.

The patentee’s argument is based on the assumption that a patent is a property right and that patent term extensions are therefore somehow inviolate. I disagree. I think that patents are, by their nature, intrinsically uncertain. They can be voided due to prior art at any time after they issue. When patent term extensions came into effect, they were applied to pending patents and to issued patents that were already in force. They granted an additional period of protection to companies that had priced their drugs without knowing that this would happen. Patent term extensions are already exceptions. It was clear to all parties that the Law was flexible and depended on the international agreements. Patent term extensions are thus exceptions to a rule that tries to find a fair balance between competing rights. Since the amendment was supposed to ensure that Israel manufacturers were not disadvantaged when compared to their foreign counterparts, the amendment was knowingly and willingly legislated so as not to disadvantage Israel manufacturers. There is nothing final about patent term extensions.

Achieving a partial success and using the German patent instead of the US one as the basis for the patent term extension was an achievement. Nevertheless, we suspect that this ruling will be appealed to the Supreme Court.

Israel Patent Office to Allow Electronic Filing

November 11, 2015


On 21 October 2015, the Israel Patent Office published amendments 1 and 2 to the patent regulations for 2015.

The amendments come into effect as of 20 December 2015.

The first amendment regulates:

  • Electronic filing of patent applications, documents and notices and the requirement for applicants to identify themselves
  • Receipt of Office Actions and other documents by email from the Israel Patent Office
  • Intermediate requests in inter-partes actions
  • How documents should be exchanged in inter-partes actions
  • How printed submissions should be made, and that the front-page is no longer required
  • How post-allowance amendments should be made
  • The request for applications to be signed has been cancelled
  • The obligation on Mentor to alert the Patent Office regarding the start of training for trainee patent attorneys and when they have to do this
  • Appeals to the Commissioner regarding non-final rejections
  • Discounts in filing fees for Schools of Higher Education and Tech Transfer Companies

Applicants wishing to file on line have to identify themselves with a smart card, and the way such smart cards may be obtained has been published.

Those wishing to receive Office Actions by email are provided with a link for so-doing.

There is a training day for patent attorneys to learn the new system. This will be held at the Israel Patent Office on 15 December 2015 between 9:30 and 12:00.

Changing Owners of a Patent

November 5, 2015


IL 191359 titled “DEFENSE SYSTEM FOR INTERCEPTING ELEMENTS WITH TARGET DIRECTED ENERGY BEAMS TRANSMITTING UNITS” was filed in 2008 in the names of Steven Shemesh, Giora Nir, Robert Landon Roach and Eliezer Abraham Shwartz. Hiowever, IL 222617 which is a divisional application of the first patent was filed in the name of Sahar LTD

Steven Shemesh requested that the second patent be filed in the names of the inventors as per the first patent. After a hearing was scheduled with the patentees of the first patent and a representative of Sahar LTD, the other parties filed a request to assign the patent to the names making the hearing redundant. The patent office accepted the assignment but noted that one of the parties,  Eliezer Abraham Shwartz was deceased, so ruled that his name should be followed by Z”L, an acronym meaning Remembered for a Blessing and roughly equivalent to RIP. The parties were given six months to register their shares and the attorney of record was ordered to provide a copy of the ruling to the beneficiaries of  Eliezer Abraham Shwartz Z”L, and the hearing was cancelled.


Inventors have the right to be named. Patents, should, however, be owned by companies rather than by a bunch of individual inventors. All patentees can  license the product or sell their share to anyone they like. With a patent directed to defense systems, this seems a little anarchistic.

When Different Applicants Request Patent Term Extensions (PTEs) For Different Patents Based on a Common Patent and Regulatory Approval

October 26, 2015


A semi-official version of the Israel Patent Law 1967 as currently amended is found on WIPO’s website. There have been three amendments of the Section of the Law that relates to Patent Term Extensions which is found in Sections 64a-64q, some of the letters relating to sections that have been repealed.  The last amendment was in 2014 and so there are some clauses that have not been explained by a court. Due to the enormous value of even very short extensions, there have been a number of applications for Patent Term Extensions which have raised interesting questions.

This Ruling concerns patent term extensions for four separate patents having different applicants. The patents are IL 159512, IL 127115 and IL 130492 and pending application number IL 132304 to Immunex, Daiichi Sankyo, Amgen and Amgen Freemont, and Amgen respectively.

All the requests are based on a patent term extension for Prolia which has the active ingredient Denosumab. The drug is designed to strengthen bones and is prescribed for women with postmenopausal osteoporosis.

The four separate applications for patent term extensions were all filed on 1 September 2011 by Reinhold Cohen representing the different applicants.  The patent term extension requests for IL 127115 and IL 130492 fall under the regime of Section 16b1 of the Eleventh amendment which sets out the transition period and requires the Commissioner to complete examining pending patent term extensions within two years of the patent issuing or within two years of the amendment coming into effect, whichever is later.

The time-frame of IL 15912 is in accordance with Section 64O as will IL 132304 should it issue.

On 22 January 2015 the applicants challenged the Examiner’s ruling under Section 161. In brief, the Applicants rejected suspending considering the patent term extension requests for IL 127115 and IL 130492 until after IL 15912 issues or until 27 January 2016.

The commissioner issued an interim ruling in accordance with Regulation 151 that states that: where different applicants request a patent term extension based on the first patent to issue for a specific active ingredient, each request will be examined on its merits until the Commissioner publishes one of these rulings after examination on the merits. Based on a comparison to Section 9 of the Patent Law, where two or more applicants request a patent extension based on the same earlier regulatory approval, the first to file takes precedence where there are no other extraneous circumstances to cause a different application to be preferred. The commissioner does not consider that in a case where different applicants come to an understanding and co-file requests for patent term extensions, he should in any way be bound to go along with them. That said, as the Applicants noted, since one or more patent applications may be rejected, it is reasonable to suspend requests for a patent term extension of later filed applications until one case is granted an extension. Essentially therefore, applications will be examined in turn according to their filing date.

The Applicants of 127115 and 130492 requested a hearing to discuss the above ruling which was held at the end of June 2015, and as a result of this, the examination of these patent term extension requests were suspended. In June 2015 the applicants filed their summaries and a hearing was scheduled. Due to this procedural delay, the requests for Patent Term Extensions of 127115 and 130492 are still pending. In the meantime, Application 159512 has issued and IL132304 has been allowed and published for opposition purposes.

In April 2015 the Applicants noted that a patent term extension was granted in the United states for US 6,740,522 to Immunex titled “Antibodies against ligand for receptoractivator of NF-kB” which relates to Prolia. Amgen and Amgen Freemont were then informed by the patent office that since the US patent as extended still lapses before the Israel issued patent for IL 15912 even without an extension, their application is moot. The applicants requested further suspending ruling on the patent term extension until IL 132304 is allowed. The Commissioner would rather examine the first case until allowance, making examining the other cases moot.

The Applicants’ supported their request with the following argument:

Until a patent term extension issues, none of the applicants should be restricted in any way. The only reason given in Section 64D for not granting a patent term extension is that one has already been given based on the basic patent and regulatory approval for the active ingredient. If this has not yet happened, all applications for patent term extensions are legitimate.
Thus a number of statements of intent to grant patent term extensions all based on the same regulatory approval of the same basic patent can issue.
The Applicants cited the patent term extension granted in 83148 to Roche Diagnostics GmbH and to IL 120701 to Wyeth to the effect that the rights to a patent term extension come into effect with it issuing.
According to the Applicants, Section 64D(4) relates to granting an Extension and should not be applied to intentions to grant.  A statement of intent to issue a patent term extension is not the same as a patent term extension order. It is not inconceivable that several statements of intent for different patents could issue. Textual support that a ‘patent term extension order’ and ‘intent to issue a patent term extension’ are not the same thing is found in Section 64L which relates to the lapsing of a ‘patent term extension order’ or an ‘intent to issue a patent term extension’ thereby making clear that these are not the same thing.
As Section 64L and Section 64K(3) teach, an ‘intent to issue a patent term extension’ can lapse, thereby indicating that this may happen prior to an actual order issuing. This indicates that the legislation should certainly have related to any intention to issue other patent term extensions than the one pending publication of the intent to issue. As detailed below, this need does not occur in Section 64D(4) of the law which relates to conditions for not granting an earlier order.
The Commissioner does not consider that the publication of several Intents to Grant Patent Term Extensions can help the Commissioner apply Section 64D(4) of the law, which does not allow granting an Extension for a drug based on an active ingredient that has been previously used as a basis of a patent term extension. The Commissioner understands Section 64D(4) as requiring publication of a single intention, thereby being clear to the public.
The Applicant’s understanding that the patent office should publishing several intentions for several drugs does not address the fact that eventually only one will be allowed. Consequently this will simply sow seeds of doubt. The term intent means real intent for a single application for a single patent term extension.
Section 64E relates to additional publications concerning the progress of a particular application. The applicants don’t believe that the final publication is indeed a final publication as future patent term extensions from other countries could change this.

The Commissioner does not consider such readings reasonable. According to the Commissioner, the Eleventh amendment which included Section 64E creates a split opposition proceeding such that the Section 64EE(1) publication demonstrates that the Application fulfils the basic requirements for which it was granted, and separates the calculation of the term for separate opposition. In this regard, section 64G(2) relates to the later opposition that only relates to the duration of the Extension and cannot be used to challenge the Extension on grounds appropriate to Section 64EE(1). Thus without a prior opposition under Section 64EE(1) the register remains clearer.

The Applicants understanding could result in the commissioner having to publish a string of notices and this will create a lack of clarity. This is not merely theoretical. US 6,740,522 and two other patents were cited as the basic patent in the patent term extensions applications for IL 15912 and IL 130492. Thus patent will lapse on 17 September 2021 which is after the natural life of IL 15912

The applicants consider that publishing an intention to grant an extension for one patent prejudices other patents behind it in the queue. The Commissioner rejects this assertion as it is the same for all publications. In other words, where two patent applications claim substantially the same invention, the first one filed is examined and the examination of later filed ones are suspended. Should the first one be withdrawn or canceled, the second one is examined on its merits.
Were IL 132304 to be eligible for a patent term extension, or even were it to be opposed, the two year period provided for in the eleventh amendment could not be met.

In summary, the Commissioner is not convinced that there is any reason to suspend the request for a patent term extension for the ‘115 and ‘492 cases until the ‘304 case issues if it ever does, and so his earlier ruling stands. The applicants of IL 15912, IL 127115 and IL 130492 are given 60 days to respond to the office actions listing missing information.


This was an imaginative submission. I think that on balance, the commissioner’s interpretation of the Law is better.
I am not sure how one firm of patent attorneys can represent four different applicants in a race to receive a Patent Term Extension PTE based on the same earlier regulatory approval. To some extent the drugs in question may compete with each other. Even if they don’t compete for treating the same illness, only one patent will be entitled to a patent term extension. It seems, therefore, that Reinhold Cohen has a conflict of interest here. No doubt, they understand conflicts of interest differently from me as well.

A Certificate for half a Patent

October 26, 2015

half a patent

Sarin Technologies applied for Israel Patent 138347 and, back in 2008, on allowance, Ugi Systems LTD filed an Opposition. The Israel Patent Office eventually rejected the Opposition and the patent was granted, however Ugi appealed the Decision to the Tel Aviv District Court. The case is pending but in an interim ruling the Court has stated that the Commissioner’s decision regarding claims 16 to 27 has been made final. Thus the Court is currently only considering the validity of claims 1-15 and claims 16 to 27 are allowed.

Sarin has applied for a patent certificate for the allowed claims.

The  Commissioner notes that section 8 states that a patent can only cover one invention and that until a patent publishes for opposition purposes one can file a divisional. In this case, there is one invention and some claims are still in dispute. It is too late to file a divisional application. Section 35 states that a patent will issue if oppositions are finally dismissed and only on the patent issuing will a certificate be given. The commissioner therefore rejects the request to issue a certificate for some of the claims.


Presumably if the Applicant cancels claims 1-15 he can bring the Opposition to an end. What I don’t understand is why the Applicant can’t do that and convert the remaining claims into a patent of addition?

Method and System for Producing a Document

October 6, 2015


Israel Patent Application number IL 215110 titled “Method and System for Producing a Document” relates to Rami Dotan and Tal Petel relates to a method of producing a “yearbook”.

The claimed invention was originally rejected as relating to an administrative methodology rather than to a technical method. Furthermore, the claimed invention was rejected as known, in light of WO 2006063327 “Method of creating a yearbook”.

In response to the first office action, the first inventor scheduled a meeting with the Examiner who explained the rejection in more detail.

The Applicant responded to the Examiner’s summary of that meeting, that there is a technical problem in the market in that the graphic designer does not know the students and so it is difficult to correctly link photographs with text.

On 7 August 2013, The Examiner issued a further Office Action detailing why the claimed invention did not relate to patentable subject matter under Section 3 of the Law and added some additional objections.

On 17 November 2013 The Applicant responded with a narrower claim set that allegedly overcame the objections.
In a final rejection dated 26 June 2014, the Examiner again refused the application and the Applicant requested a further Interview.

On 5 November 2014, the Applicant, his “representative for the purposes of the Interview” (apparently Patent Attorney Chaim Brandstatter) and the Examiner met, and versions 4 and 4 1/2 of the claims were discussed. Based on the similarity of the cited art WO 2006063327 “Method of creating a yearbook” and the claimed invention, the Examiner was persuaded to withdraw his section 3 (patentable subject matter) rejection and to focus on the issue of novelty and inventive step (non obviousness).

Furthermore, the parties accepted that the differences between the cited art and the claimed invention were features known to persons of the art.

Following the meeting of 6 November 2015, the Applicant submitted a further version (version 5).

Despite the Examiner considering the claimed invention to be obvious in light of WO 2006063327 together with two elements well known in the art, the Examiner did a further search and discovered USSN 2002/0055955 “Method of Annotating an Image” that allegedly taught these two features. Consequently, the Examiner refused the application under section 5.

The Applicant appealed this decision:

The Applicant felt that the 5th version of claims, submitted after 5 November 2014 was not addressed. The Examiner countered that the elements in version 5 were not supported. The Applicant considered that this went against the conclusion of the meeting, Examiner guidelines and Section 23 of the Law.

According to the guidelines, after issuance of a final rejection, the Applicant can either correct the outstanding issues or request an interview. In this instance, the Applicant attempted to do both, and following the interview, submitted a further claim-set. Thus the Examiner was within his rights to reject the Application following the interview, despite the further amendment submitted.

Neither the Law nor the Regulations provide a maximum number of Office Actions, but the Deputy Commissioner, Ms Jacqueline Bracha considers it unacceptable to understand that the examination allows infinite iterations and the Examiner cannot issue a final rejection.

That said, the case was considered borderline and the Deputy Commissioner was prepared to rule on the merits of the claimed invention, i.e. to look at the final version of the claims.

The claimed invention is:

1. A method for producing a document (30, 32, 36) comprising photographs (38) of persons (16A, 16B, 16C) and texts (42) associated with said photographs (38), said method comprising the steps of:
Manually capturing a single photograph or a single group (A, B, C) of photographs for each of said persons (16A, 16B, 16C), by a photographer (24), and loading the photographs while recording the singularity to a first table (58) of a database (52) being a part of a site (22) on the internet (14);
Manually providing by an organization in which said persons (16A, 16B, 16C) are members, a second table (26) to said database (52), said second table (26) comprising one text (42) for each of said persons (16A, 16B, 16C);
Manually matching, by persons familiar with said persons (16A, 16B, 16C) each of said texts (42) of said second table (26) with one of said photographs of said first table (58);
Upon said manual matching, programmably hiding that text (42) and the photograph matched thereto and any photograph grouped thereto, thereby avoiding failures;
Manually printing, by a graphic artist (20) accessing said database (52), each of said matched photographs (38) adjacent to the text (42) matched thereto,
thereby tracing a failure once a text of said second table (26) cannot be matched with a photograph.

Claims 2-10 are dependent method claims and claim 11 is for a corresponding system.

The claimed invention is similar to the first citation, with two features taught in the second citation.
Since the Applicant does not provide an alternative method of implementation to that given in the prior art, the claimed invention is either not enabled or lacks inventiveness.

Section 12 requires enabling disclosure. Where a method of achieving the claimed invention is not provided, one can conclude that either it is not possible or that it uses known elements and is thus obvious. Either way, in this instance, the Application does not provide enabling disclosure and is thus not allowed.

In conclusion, the Application was rejected.


In Australia, the patent corresponding to WO 2006063327 did issue back in 2005. I am not sure though, that it would still be considered directed to patentable subject matter as such computer facilitated inventions are rather difficult to obtain.
From the number of dubious publications with titles such as Directory of World’s Leading Patent Experts that I am invited to appear in subject to paying exorbitant fees, it does seem that there are patent attorneys who missed out on their high school yearbooks and are willing to pay to see their mug-shot and biography in a directory that no one reads.

Israel Patent Office Statistics 2014

September 21, 2015

statistics 2
Under the Rules for Disseminating Public Information, the Israel Patent Office has published its annual report for 2014. The report may be found Annual Report 2014_(Hebrew). The English version is not yet available.
Paper windmill

The most interesting thing about the report is probably the graphics. Following previous years where the report was decorated with paper airplanes and paper hot air balloons, this year’s report is embellished with paper windmills. Why? The Answer, My Friends, is Blowin in the Wind.

I don’t intend extensively reproducing the graphs. Frankly they are not all that interesting. Instead, here are some observations and possible explanations.

6273 Patent Applications were filed in Israel in 2014 which is slightly up from 6184 in 2013, but still significantly lower than the 6793 applications filed in 2012. Indeed, Apart from 2013, the number of patent filings for 2014 was the lowest in a decade which peaked at 8051 applications in 2007. Applications pending examination are also down and more applications are being allowed. We attribute this to the fact that a precondition for the Israel Patent Office being an International Search and Examination Authority was for there to be a minimum of 100 examiners. This gives a favorable Examiner to application ratio that has resulted in shorter backlogs and more efficient examination.
18% of Applications are filed by local entities in 2014 which is the highest in the past decade. This statistic probably reflects the fact that many of the historic advantages of provisional applications are no longer the case and that small timers paying a reduced filing fee may find filing in Israel cost-effective compared to the US. Of course what this also means is that foreign filings made up a mere 82% of total filings in 2014, down from 88.8%. By a little mathematical manipulation, it seems that the number of foreign patent filings into Israel has dropped by about 250 or by 6.75% in the past year.

In an earlier post, I reported on a study by BdiCoface which found that 3,555 Israel based patents were filed in the US.  During this same period, only 1129 cases were filed in Israel by Israeli entities. In other words, Israelis and Israel companies are three times as likely to file in the US as in Israel. Some technologies, such as security related ones have to be first filed in Israel. Some cases, such as methods of treatment, are only patentable in the US. Nevertheless, filing Israel patents is clearly not a priority for Israel based patenting entities. It is certainly true that Israel is a small market. Nevertheless, since enforcement is considerably cheaper in Israel than in the US, I think that companies should consider filing in Israel more seriously. Particularly where there are Israeli employees and business partners.

After a slow start in 2011-2012, There has been a sharp rise in accelerated examination in Israel by suing the Patent Prosecution Highway, with 94 applications being examined via the PPH.

Interestingly, some 22 administrative decisions were made in 2014 to allow late entry into Israel from a PCT application of which 18 were favorable. Israel holds the relatively high standard of allowing late filings in circumstances that are ‘unavoidable’ rather than merely ‘unintentional’. I wonder if the 18 cases were truly missed deadlines due to acts of God, earthquakes, postal strikes and the like, or if the patent office is becoming more lenient in this regard?

Fascinating Bits of Trivia

As usual, the report includes some fascinating statistics such as Israel being the 24th most popular patent filing destination in the world, slightly more popular than the Ukraine, but less popular than New Zealand. When normalized by GNP, Israel remains the 30th most popular destination in 2013, with 480 patents per billion US dollars. This puts Israel ahead of Ireland at 449 patents per billion US dollars, but slightly behind Kazakhstan with 493 patents per billion US dollars. When normalized for population size, Israel comes in at 28th place with 149 patent applications per million residents. This is slightly less than Latvia (151) and Belarus (167) but ahead of Iran (146 patents per million).

There is a rallying in the number of PCT applications filed by Israelis, both in Israel and elsewhere which may indicate that we are pulling out of the effects of the World Wide Recession.

Some 59.4% of PCT applications filed in Israel specify Israel as the International Search Authority, up from 55% in 2013 and probably indicating customer / attorney satisfaction with the International Search Reports issued. In 2014, Israel conducted 9 ISRs for PCT cases outsourced by the USPTO. This was a mere pilot and may become a popular service.

A very significant percentage of patent applications filed in Israel are for pharma technologies. This presumably reflects the strong Israel pharma industry including Teva, Neurim, and generic companies such as Unipharm and Perrigo (technically an Irish company, but largely ran from Israel) rather than Israel’s attractiveness as a market.


The number of design applications filed in Israel last year was 1384 which is slightly higher than 2013 when 1353 design applications were filed, but still lower than for every year from 2004 through 2012. This follows the trend seen with patent applications filed in Israel. Bck in 2008, 1775 design applications were filed, so there is certainly potential for more of this type of work.

We anticipate that plans for Israel joining the international system for filing design applications will probably increase the number of designs filed into Israel, but reduce the billable work for patent attorneys. This is what happened with trademarks, where there has been an overall increase in trademark applications but this is mostly due to the Madrid Protocol applications designating Israel, and there has been a drop in trademark filings filed directly into Israel and thus a similar drop in billable work for patent and trademark attorneys.


With less work coming in, and an increase in both legitimate competition and illegitimate, i.e. licensed practitioners including patent attorneys and attorneys-at-law, encroachment from non-licensed practitioners, including jumped up paralegals, retired examiners, failed patent attorneys, retired US practioners and US companies that operate directly in Israel such as Finnegan et al. and others, there is apparently more people after less work, and things are unlikely to get better quickly.

It is easy to blame the depressing statistics on international trends and to see this as the fall out of the World Wide Depression. Indeed, filings peaked in 2007, and the Lehmann Brothers went bankrupt and things started spiraling out of control in 2008. Nevertheless, it is not impossible that the IPO can do to reverse the trend, or to speed up the recovery. I would suggest that the very fast and significant increases in various Israel Patent Office fees coupled with the relatively strong Shekel may be turning away potential filers. The USPTO and EPO essentially set fees to cover operating costs. The Israel Patent Office is a cash cow that generates income for the Israel Government and which has an income that is apparently twice its operating costs. I would suggest that many fees could be reduced to pre-Greed levels and salaries for Examiners and other IPO staff could also be increased to levels more commensurate with what attorneys in private practice earn. This can only increase the quality of the Israeli examination. With greater motivation, examination periods might become even shorter and standards might increase. This together with reduced filing and other fees could make Israel a more attractive component of potential IP portfolios.


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