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.

Israel Trademark 249163 for E-go – Costs Reduced Dramatically on Appeal

November 11, 2015


Seven 23 S.R.L. filed Israel Trademark Number 249163 for Ego, covering:

Eau de Cologne; cosmetic creams; cosmetic preparations for skin care; eau de toilette; hair spray; cleansing milk for toilet purposes; lotions for cosmetic purposes; lip glosses; mascara; cosmetic pencils; oils for cosmetic purposes; lipsticks; cakes of toilet soap; shampoos; nail varnish; soaps; perfumery, essential oils, cosmetics, hair lotions; dentifrices in class 3; Eyeglasses; lenses for eyeglasses; contact lenses; sunglasses; cases for eyeglasses; eyeglasses frames; eyeglass chains; eyeglass cords; containers for contact lenses in class 9; Precious metals and their alloys and goods in precious metals or coated therewith, not included in other classes; jewellery, precious stones; horological and chronometric instruments in class 14; Leather and imitations of leather and goods made of these materials and not included in other classes; trunks and travelling bags; umbrellas, parasols and walking sticks in class 18, and Clothing, footwear, headgear in class 25.

After an Opposition was filed by Michael Shokorola Muthada, Seven 23 S.R.L. decided to abandon the mark and thus costs were ruled against them. Michael Shokorola Muthada requested costs of 20,000 Shekels. Adv. Aharon Factor who  handled the case appealed this sum noting that Muthada’s attorneys did not detail or attempt to justify these costs. Under Section 69, Ms Yaara Shoshani Caspi came up with what she considered a more reasonable figure and reduced the costs to 6000 Shekels.


We represented the Applicant in this case.

Home 4 U

November 5, 2015

Israel Trademark Application Number 238757 was filed by Itzik Peretz for the following image:

Home 4 U

The Hebrew words mean (Mediation and Consulting for Real Estate).

The Application was filed on 27 June 2011 and after allowance, it published for Opposition purposes and an opposition was filed by Oded Lifshitz on 21 October 2012. A hearing was held on 23 March 2012 where both sides were invited to summarize their positions.


Itzik Peretz has an estate agent (realtor) business that has operated in the Netanya region since 2007. The firm operates under the name Home 4 U.

Oded Lifshitz ha operated in the same business since 1999. In January 2005 he filed Israel trademark application No. 177762 for HOME4U which was registered.

In 2008 Peretz looked for a website address for his business, and, on discovering that the domain was not available, he registered

In May 2011, Lifshitz sent Peretz a Cease & Desist letter and Peretz changed his website address to believing this to be sufficiently different to keep Mr Lifshitz happy. Mr Lifshitz was not satisfied with this and filed a suit in the Small Claims Court of Tel Aviv – Jaffa, claiming inter alia, trademark infringement.

The Court acknowledged trademark infringement, but due to a lack of evidence, did not award damages and threw out the case.

The Opposer’s Position

Lifshitz claimed that his earlier word mark home4u was sufficient grounds for the Examiner to have refused Peretz’ application.

Lifshitz supported his case with a declaration from himself and further statements from two other realtors who claimed to know him for several years. He argued that the proposed mark was confusingly similar to his registered trademark and to his store sign and it was totally irrelevant that Peretz had registered his company as Home 4 U Mediation and Consulting for Real Estate LTD.

Applicant’s Position

The Applicant Peretz denied knowing the Opposer or his business prior to the case being filed against him in the Small Claims Court. Then he discovered that Lifshitz had a real estate business in the Tel Aviv region that was registered as Better Location LTD, a Place for My Home, and that Lifshitz had registered the domain.

Peretz does not consider the his trademark application is confusingly similar to Lifshitz’ mark, and does not consider that Lifshitz is actually using his trademark. Furthermore, Peretz does not consider his application in any way similar to Lifshitz’ business name.

Peretz considers that since the Small Claims Court did not award any sanctions against him, Lifshitz is estopelled from claiming infringement of his trademark. Peretz considers the term home4u has become generic over the years and lacks distinctiveness. However, as a fall back position, he is willing to add the word in the Sharon which denotes the Sharon region around Netanya.


The Adjudicator of Patents and Trademarks, Ms Yaara Shoshani Caspi considers that the relevant grounds for opposition are sections 11(6) and 11(9) of the Trademark Ordinance 1972.

11. The following marks are not capable of registration:

(6)  a mark likely to deceive the public, a mark which contains a false indication of origin, and a mark which encourages unfair trade competition;

(9) a mark identical with one belonging to a different proprietor which is already on the register in respect of the same goods or description of goods, or so nearly resembling such a mark as to be calculated to deceive;

Section 11(9) provides protection to a trademark owner from identical or similar marks being registered where there is a likelihood of confusion regarding the source of goods or services provided under the mark. Since the marks are not identical but are similar, it is necessary to consider the likelihood of confusion for goods or services covered by the marks.

Ms Shoshani Caspi then went on to apply the triple test as detailed in Pro-Pro Biscuits this Promein and in Bank Igud vs. Bank Agudat Israel, rejecting allegations that Lifshitz’ mark should be invalidated as being irrelevant to the Opposition Proceeding.

Section 11(9) was relevant as the services covered by the two marks is the same.

Sight and Sound

As to the sound of the mark, Ms Shoshani Caspi noted that one had to compare the marks as a whole, whilst noting that customers have imperfect memories.

Since the other words of the mark and the red roofed house graphic are generic-descriptive, the only part of the mark that is distinctive is HOME 4 U. Support for this position was found in Applicant’s witness’ testimony who referred to ‘the name Home 4 U with the red house logo’ and then stated that “as to how customers related to the firm, I ask them which realtor send them and they answer home 4 u.

Consequently, Ms Shoshani Caspi considered the appearance and the sound of the dominant element of the pending mark as confusingly similar to the issued mark. She did not consider that having spaces between the ‘home’, the ‘4’ and the ‘u’ was significant.

Clientele and Marketing Channels

Although the two businesses operated in different towns, that did not prevent a likelihood of confusion as the clients were interested in purchasing property and one or other of the concerns could open a branch in a different town.

In previous rulings such as Great Shape and Aroma, it has been noted that Israel is a small country, which makes a confusion between businesses operating in specific locations likely. Furthermore, both companies make extensive use of the Internet. Again, the fact that the Opposer uses a different moniker, i.e. Better Location is irrelevant as whether or not the opposer’s mark is voidable is not relevant to the present opposition proceeding. More relevant is that many real estate listings don’t allow graphic representation and the Netanya business thus advertises itself by name.

Everything Else

The Adjudicator noted that Lifshitz had alleged inequitable behaviour on the part of Peretz in choosing his business name but did not consider this proven. On the other hand, she rejected the estoppel argument noting that only the Patent & Trademark Office had the authority to register marks. Even putting that aside, the failure of the small claims court to determine that there was no infringement of Lifshitz’ mark did not mean that Peretz’ mark was registerable as the legal questions were different.

Since the marks were confusingly similar and were directed to the same clientele and marketing channels,, without other issues being significant, the Opposition could be accepted making consideration of Section 11(11) redundant.

Unnecessarily, Ms Shoshani-Caspi went on to consider Section 11(6) anyway. Here she did not find the evidence conclusive.


Ms Shoshani-Caspi ruled that the Israel Trademark Application Number 23857 be canceled and awarded 9000 Shekels costs to the Opposer, Mr Lifshitz.

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.

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.

Eden vs. Eden Wineries – Competing Marks

September 21, 2015

Out of Eden

Two wineries have had the same idea, and have each filed trademarks. One is for Eden, and the other for Eden Winery.

The Israel Trademark Office was not prepared to let two such similar marks coexist, and initiated a competing marks proceeding.


One of the parties filed evidence without the help of legal counsel and then sought legal counsel. On advice of said counsel, they requested to correct their submitted evidence ahead of the hearing arguing that under Section 41 of the regulations, the Commissioner can authorize such amendments.

The other party objects to this, and insinuates that it is destroying evidence, and that there is no procedure for ‘correcting’ an affidavit once it has been submitted. The applicant denies trying to hide anything and claims that the Patent Office has wide discretion regarding allowing such amendments.

The first party responded and the second party requested that the first party’s response be struck from the record. The Deputy Commissioner Ms Jacqueline Bracha decided not to relate to all the responses and counter responses, but only to the issue of submitting further evidence and correcting the submission. She noted that the first request understood that it was permissible under Court Procedural Rules adopted by the Patent Office in the relevant Circular (013/2012 v. 1), and that neither side had asked or received permission for subsequent submissions.

On the grounds that the procedure for competing marks is not set out in the regulations and that the hearing has not happened, the Deputy Commissioner Ms Jacqueline Bracha agreed with the request and allowed the submission.  As to the charges of ‘correcting the affidavit’, Ms Bracha considers that the applicant wishes to exchange one set of evidence with another and not correct the affidavit, and considers this allowable, whether as submission of additional evidence or as correcting the statement of case.

The Deputy Commissioner based her ruling on the following considerations:

  1. the Affidavit related to the key issues of when the mark was first used, extent of use and use in good faith. She was prepared to consider discrepancies between the first and second statements in her final ruling, but considered it appropriate to allow the exchange of evidence.
  2. The submission of the additional affidavit does not turn the clock back and result in a lost of opportunity to the competing party who can cross-examine on the apparent discrepancies if he so wishes.
  3. The competing party can relate to the evidence in the second affidavit in writing up until two days before the hearing.

Noting that such procedural irregularities cause additional work, she ruled costs in favour of the competing party, but due to the competing party submitting three rounds of procedural complaints she limited the interim costs to a mere 500 Shekels.


I am not sure that wine is associated with Eden. Wine and its afflictions were first discussed after the Flood. That as may be, there is no place in Israel that is called Eden. We to have an Arab village called Faredis which became corrupted as Paradise, and there is a Gei Ben Hinom, the Hinom Valley below the Old City of Jerusalem whose name as Gehenna become associated with hell.

The name Eden is used for by a natural food supermarket, by L’Oreal and others. Apart from bottled water marketed under Waters of Eden, the mark is already registered by Absolut Vodka in class 33, which is the same class as wine.


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