Submitting Corresponding European File Wrapper In Israel Patent Opposition Rejected on Procedural Grounds but Decision Overturned by Court

August 18, 2014

tangled web

DSM filed Israel Patent Application Number 142789 for high directional – fibers. The patent claimed priority from Dutch Patent NE 1010413 from 28 October 1998. The patent covers the fibers themselves and both ropes and anti-ballistic equipment fabricated from the fibers.

The Application issued under Section 17c, based on the corresponding United States Patent No. US 6,916,533 and published for opposition purposes in April 2006. DSM also has a couple of corresponding European patent applications. One was rejected and the other, EP 113828, was allowed but with narrower claims.

Mifalei PMS Migun (PMS Protection Factories) filed an opposition which was heard by Adjudicator of IP, Ms Yaara Shoshani Caspi. The opposition proceedings included a hearing on 28 and 29 June 2011, during which the Opposer requested to submit the file wrapper of the corresponding European case, but Ms Shoshani Caspi refused to allow this to be entered. On 17 October 2013, the Adjudicator upheld the patent and rejected the opposition. The Opposer has appealed this decision, particularly the intermediate decision not to allow the file wrapper of the European case to be submitted.

The Appeal

The Opposer filed a long-winded and detailed Appeal that claimed that in addition to factual errors and illogical conclusions regarding novelty and inventive step, the arbitrator also erred on legal principle. Specifically, the Arbitrator did not give sufficient weight to the fact that the Applicant had not made the European file wrapper of record, contrary to the duty of disclosure and the obligation of equitable behaviour. Specifically, the Applicant did not make the fact that one European patent was refused and one was significantly narrowed, concealed a graph and failed to provide an English translation of a Japanese patent cited as prior art, merely providing the Japanese original.  Accepting the case under Section 17c without considering the other family members and applying technical discretion was considered unacceptable, as it transferred the burden of proof to the opposer. Furthermore, the Opposer claimed that the standard of proof that the arbitrator demanded was beyond reasonable doubt rather than simply the burden of evidence generally required in civil procedure. The Opposer challenged the patent office for failing to examine the patent, and for simply relying on the US patent under Section 17c.

The Opposer claimed that when requesting allowance under Section 17c, the applicant should have proactively submitted all corresponding cases, and referred to District Court ruling on the issue.

The Patentee’s Response

The respondent (patentee) argued that the arbitrator had given a detailed and reasoned ruling based on factual and professional issues that the courts didn’t generally consider on Appeal. As to the graph, it was considered irrelevant to the adjudicator’s upholding of the Novelty and Inventiveness of the Application. The patentee rejected the claim that the duty of disclosure required submitting English language translations of all references, unless requested to. The Existence of corresponding European patent applications was alluded to in the file wrapper of the Israel application. Once allowed under Section 17c, there is no longer an ongoing duty of disclosure.

The patentee argued that the appeal was not one against the intermediate ruling concerning the European file wrapper. The appeal was only against the final decision from October 2013. The Patentee considered that the time to appeal intermediate rulings had long past. Furthermore, amending the statement of appeal was insufficient, since this was a separate appeal on the decision, not on intermediate rulings, and a request to amend the ruling was first raised in a hearing in April 2014.

The appellant countered that the original hearing had mentioned the intermediate ruling as grounds for appeal, both in the statement of appeal and in the Statement of Claims, and the intermediate decision was appended to the file. Case-law does not require the appeal to include the protocol. The request to amend the Statement of Appeal was not to introduce this as new material, but merely a safety precaution.

The Ruling

Under regulation 411  of the Civil Court Procedure, in addition to being able to appeal intermediate rulings after they are given, appellant may appeal intermediate as well as final rulings by right when appealing after the final ruling issues. Respondents (Patentee’s) claims that the appeal does not relate to intermediate rulings is not accurate. Point 76.2 of the Notice of Appeal notes that the adjudicator erred in failing to allow the European file wrapper to be entered into the Opposition. The fact that she did not give sufficient weight to the European patent office’s conclusions is mentioned earlier in Point 7.5. Reference is also made in Point 12 and Point 43. This was also fleshed out on 19 March 2014 in Chapter 3(6) of the main claims.

On examining the protocol, this intermediate ruling does not appear under the heading Decision or Ruling. It is scattered over 13 pages of protocol and is not detailed. It seems that the arbitrator was simply over-whelmed with the amount of material submitted. It is only in the final ruling that the decision not to allow the introduction of the European file wrapper is first discussed formally with legal support and so it is reasonable to appeal it when appealing the decision as a whole.

Filing the protocol regarding the intermediate ruling only on 28 Feb 2014, is somewhat unacceptable in that it contravenes Regulation 419(1) of the Civil Procedures. The appellant’s statement that they do not need to submit intermediate rulings and protocol is problematic and they should have submitted it. Nevertheless, since the protocol does not clearly state this as a Ruling or Decision, this flaw may be dealt with when awarding costs.

Citing the Regulations, the Judge noted that the court has the discretion to allow the Statement of Appeal to be amended at any time, awarding costs if necessary, so there was nothing inherently wrong with the appellant’s request to amend the Statement of Appeal. Indeed, contravening the procedural regulations does not disqualify a case in and of itself.

Judge Judith Schitzer was prepared to allow the protocol to be entered and the intermediate ruling to be appealed, despite procedural flaws, and went on to relate substantively to the issues raised by the European file wrapper.

The Arbitrator justified refusing to allow the European file wrapper to be considered on three grounds: the timing, failure to submit an affidavit and a suspicion that the respondent would not be able to cope with the new evidence.

In the ruling, Judge Schitzer  determined that the Adjudicator Ms Shoshana-Caspi should have considered the timing, the relevance of the material in reaching a true and just ruling, the damage to the parties if additional material is allowed to be considered, and whether the other party has the ability to relate to the new evidence.

As to the timing, the Opposer wished to introduce the additional material during the evidence stage and not after this stage was concluded. The Opposer requested to confront the expert witness of the Applicant with the European file wrappers. The Applicant countered this request by claiming that the new evidence should have been submitted at the evidence stage and not during cross-examination of the witness. If there was a delay here, it was a relatively minor delay, and is not comparable to submitting evidence after the evidence stage is closed, or during an Appeal. Citing Gabai vs. Aminach, Judge Schitzer noted that in patent appeals, the appellate court has wider jurisdiction than in other appeals and can hear new evidence if required to in order to get to the truth. How much more so (a fortiori) should the opposition proceeding by prepared to hear new evidence if it will help to clarify whether or not an invention is patentable.

Where one corresponding European patent is cancelled and one is severely narrowed, there is a prima facie basis to assume that the assumption of validity at the basis of a Section 17c allowance is suspect, and the Opposer should be able to have the evidence considered. Furthermore, the European file wrapper is not a surprising piece of evidence. The Applicant mentioned the corresponding European case, albeit laconically and possibly with insufficient detail, but nevertheless, should not be surprised by its inclusion; particularly as DSM was the applicant in Europe. In the circumstances, the European case should have been considered in attempting to do justice. The attempt by the Adjudicator to manage the case efficiently and smoothly is understandable but should not come at the cost of reaching a just conclusion, and the late stage at which the European file wrapper was submitted can be grounds for adjusting costs.

The Judge then cited from a pertinent Supreme Court ruling (1297/01 Michaelowich vs. Clal Insurance LTD) and noted that in patent cases there were a fortiori grounds to be even more lenient.

Furthermore, in the Statement of Case, the Opposer stated that they would refer to corresponding file wrappers, so the Applicant had plenty of time to prepare themselves.  The judge refrained from ruling whether or not the applicant should have been more open in acknowledging the European case. Suffice to say, that when it did come up, they should have related to the issues of novelty and patentability instead of fighting to prevent it being considered.

Judge Schitzer went on to note that the patent regulation 63 actually states that after the end of the evidence stage the parties cannot submit additional evidence without the permission of the Commissioner, implying that prior to the end of the evidence stage they can submit additional evidence, and even after this stage, the Commissioner has the discretion to allow such additional evidence to be submitted and should apply judicial consideration wisely instead of narrowly relying on procedural grounds. Further evidence to this wide discretion was found in Regulation 72.

As to the lack of an Affidavit, the Judge noted that if Ms Shoshana Caspi had felt the need for one, she could have asked for it, but not all evidence actually requires affidavits. Some evidence is self-evident and can be considered on its merits. Indeed, the Opposers raised this issue themselves, stating that the file wrapper speaks for itself.

Since, as ruled in 6837/12 Merck Sharp & Dohme Corp. it is preferable for the specialized courts to consider the issue of novelty and patentability, Judge Schitzer referred the case back to the Adjudicator to consider patentability of the claims in light of the European file wrapper.

In conclusion, Judge Schitzer stated that she was refraining from addressing the issue of novelty and inventiveness head on and also was leaving it to the arbitrator to decide whether or not an affidavit was warranted, and if so, to indicate to the parties what the affidavit should include.

Nevertheless, since the Opposer (the appellant) was responsible for the procedural irregularities, despite accepting the Appeal, she awarded costs of 15,000 Shekels against the appellant.

Civil Appeal 34029-01-14 Mifalei P.S.M Migun vs. DSM, Judge Judith Schitzer of Tel Aviv District Court, 12 August 2014.

COMMENTS

I suspect that the judge’s last remark regarding affidavits was tongue-in-cheek. Indeed I have been fighting the Israel Patent Office regarding the need to supply affidavits to support self-evident facts.

The Judge is correct in her analysis and there is a moral here, in that with patent issues it is neccessary to prefer substantive arguments rather than to have awkward material dismissed on procedural grounds.

Here

 

 

 


Ella Moss, are there grounds for Judicial Estoppel?

August 18, 2014

Ella Moss

Israel Trademark Number 241679 “Ella Moss” (the word mark, not the mark with butterfly, but it is a nice illustration, and this isn’t the sort of blog where we feature models in swim-wear) was filed by Mo Industries LLC. the mark covers clothing, namely, tops, bottoms, pants, skirts, jackets, coats, sweaters, cardigans, dresses, vests, ties, sleepwear, lingerie, undergarments, swimwear, rompers, baby bodysuits, layettes, activewear, namely, tops, bottoms, athletic clothing, sweatshirts, sweatpants, sweatshirts and jerseys, outerwear, namely, coats, jackets, parkas, vests and fleecewear, belts, footwear and headwear; all included in class 25 and retail store services featuring clothing and accessories, belts, footwear, headwear, purses, jewelery; all included in class 35.

Shimon Bodakov filed an opposition to the mark.

The interesting wrinkle in this case is that there is a corresponding case, Israel trademark no. 242680 “Ella יופי שנוח לך” (literally Ella, comfortable beauty) covering Clothing, footwear , headgear in class 25, that was filed by Shimon Bodakov and is being opposed by Hachette Filipacchi Presse. Shimon Bodakov is represented by Gabriel Kramer, and both Mo Industries LLC and Hachette Filipacchi Presse are represented by Dr Shlomo Cohen Law Offices.

The “Ella יופי שנוח לך mark is reproduced below.

Ella

In this case, Mo Industries requested that the trademark opposition be thrown out since in the 242680 case Bodakov / Kramer argued that there was no similarity between Ella Moss and  the graphical mark Ella יופי שנוח לך, whereas in the current case they are arguing a confusing similarity between the marks. Due to the contradictory arguments, the opposition should be thrown out.

Bodakov / Kramer responded that there is no estoppel. The other, ongoing opposition was indeed filed first, but has not been ruled on, and it is the job of the Commissioner of Patents and Trademarks to decide whether or not there is confusing similarity or a likelihood of confusion. In the meantime, there is no reason why they have to be consistent.

The Ruling

The principle of Judicial estoppel is that a party claiming one thing in one case, once that claim is accepted, cannot deny that claim or make a contrary claim in a later case, even against a different party. A guiding principle of the Judicial estoppel is that the party succeeded in the earlier case. See 513/89 Interlego A/S vs. Exin-Lines Bros. S. A. and 6753/96 MM. Ch. T. vs. Friedman. The rationale against requiring success in the first ruled case is to prevent contradictory rulings by the courts.

In more recent rulings, the principle that the first case has to be successful is left open,  and it appears that there is no definite ruling on the issue. See 4224/04 Bet Sasson vs. Shickun Ovdim v’Hashkaot LTD. and 6181/08 Vinoker vs. The Head of VAT in Acre. The current trend is to look at the issue of equitable behaviour of the parties.

In this instance, there are two parallel opposition proceedings concerning Ella Moss and Ella יופי שנוח לך. In the 242680 case, Bodakov / Kramer argued that the two marks are not confusingly similar, and in the current case, which was filed later, Bodakov / Kramer filed an opposition on the grounds that the two marks were confusingly similar.

Nevertheless, it is not clear that there is a judicial estoppel in this case, since there has not been a decision. Furthermore, it is difficult to claim inequitable behaviour on the part of Bodakov / Kramer since they are simply interested, that should the Commissioner of Patents and Trademarks decide that the two marks are indeed confusingly similar, that their mark should be preferred. Furthermore, should the opposition to 241679 be cancelled, then the mark would automatically be allowed and this would hobble Bodakov / Kramer since they would have to fight an issued mark and not a pending one.

Due to the seriousness of throwing the case out based on the estoppel and inequitable behaviour construction, which would deprive the Opposer of his day in court, and noting that the case-law does not consider arguments in pending cases as estoppeling, Ms Shoshani Caspi (the adjudicator of the case) rejected the request to throw the case out.

At the focus of both cases is the question of the confusing similarity between the two marks, however the parties are not identical so Ms Shoshani Caspi considered that it would not be fair to combine the two cases. the request for throwing out the opposition was rejected, but in the circumstances, no costs were awarded.

Ruling in Ella Moss, 22 July 2014.

Comments

As the marks are identical and the lawyers are identical, despite the different parties represented by Dr Shlomo Cohen Law Offices in the two cases, it could be argued that there are good grounds to combine the cases, or at least to offer the parties the opportunity to fight the two cases together. Such a development would save valuable time for the arbitrators at the patent office. It is,  however, correct for Ms Shoshani Caspi to overcome the temptation. Hachette Filipacchi Presse could conceivably want to challenge Ella Moss, for the same reasons that they have challenged Ella יופי שנוח לך. One assumes that the issue involves the word Ella for women’s fashion. Combining the cases could therefore result in Dr Shlomo Cohen Law Offices representing both Hachette Filipacchi Presse and Mo Industries LLC and  having to argue that Ella is both distinctive and generic, and that would seem to raise judicial estoppel. It would seem unlikely that in a combined action they could fairly represent the two parties to the best of their ability. Also, working out how to charge two parties sharing a combined case could be complicated.

The ruling provides insights into the concept of Judicial Estoppel and is a valuable intermediate ruling.

 

 


Israel Patent Number 94634, Extending and Shortening Patent Term Extensions

August 18, 2014

Rapamune Sirolimus

Under Section 64 of the Law, basic pharmaceutical patents may be extended for up to five years past the 20 years standard maximum term, in order that the drug developer is able to market the drug exclusively for a period of up to nine years. Since the Patent Term extension was first introduced, granting patent term extensions, but enabling generic competitors to try to synthesize but not stockpile the patented drug, the Law has been amended a couple of times. The first time was the seventh amendment, designed to allow Israel generics to compete with generic companies in other jurisdictions by reducing the term of patent term extension in Israel, to the shortest term allowed in another jurisdiction having patent term extensions (Bolar Countries). Under US pressure that the Israel Law was too generous to generic companies, the Law was amended again in the eleventh amendment in 2014.

Sir Roy Calne filed Israel Patent Number 94634 for COMPOSITIONS INHIBITING TRANSPLANT REJECTION IN MAMMALS USING RAPAMYCIN AND DERIVATIVES AND A CHEMOTHERAPEUTIC AGENT in June 1990, claiming priority from a case filed in June 1989. The patent issued in July 1996.

In June 2001, the applicants requested an patent term extension and in September 2002, a sole license was granted to Wyeth.

The drug was registered in January 2001 and an extension was granted in January 2004. The extension covers the drug RAPAMUNE and the active ingredient SIROLIMUS. The drug term extension was granted on the basis of the corresponding US patent no. US 5,100,899 whose product received marketing approval back in September 1999.

In the request for patent term extension, the applicant reserved the right to change the basic patent they were basing the application on, if a different patent of a Bolar country should lapse earlier.

the patent term extension issued on 25 January 2004 and the applicant was informed that it would publish in the January 2004 journal. No oppositions were filed against this extension. In the same letter, the Examiner requested that the applicant update regarding any patent term extension of the basic patent in the US, and any other patent extensions.

In November 2004, the applicant responded that the US patent application was still pending and that he required a time extension to respond to the Examiner. Furthermore, the applicant noted that it was examining the possibility of basing the patent term on the corresponding Australian patent.  After further correspondence, it transpired that the Australian patent term was extended until 5 June 2015 and the applicant therefore requested a full five-year extension in Israel based on the Australian patent.

After the 7th amendment of 2006, to the Patent Law, the applicants were required to detail all patent term extensions and to provide copies of the documentation regarding the license to sell the drugs and the patent term extensions. Neither the applicants or their representatives responded to this request.

In January 2013, the Association of Israeli Pharmacists filed a request to cancel the extension order, which was accompanied by an affidavit from Dr Ron Tomer (a director of Unipharm), who is a member of the committee of the chemical and pharmaceutical division of the Association of Israeli Pharmacists.

In June 2013, Wyeth responded to the cancellation request, submitting an affidavit of Dr Alvin David Joran, the legal adviser of Pfizer Inc. who had purchased Wyeth in 2013. The Association of Israeli Pharmacists filed a counter argument that included an Opinion by Elizabeth J Holland, an attorney at Kenyon and Kenyon, and also a further affidavit of Dr Ron Tomer. Pfizer decided not to cross-examine  Elizabeth J Holland on her affidavit but both Dr Alvin David Joran and Dr Ron Tomer were cross-examined in a hearing on 27 May 2013.

The Association of Israeli Pharmacists maintain that under the 7th Amendment, the longest available extension should be no more than 7 July 2013. Furthermore, this was the longest period available before the 7th Amendment, i.e. based on US 5,100,899. Furthermore, there is a specific and explicit requirement for equitable behaviour in Section 64B(i) and the applicants failure to respond tot he requirement to detail all patent term extensions and to provide copies of the documentation regarding the license to sell the drugs and the patent term extensions was itself grounds to deny any further extension.

The patentee argued that the interim arrangement of the 7th amendment damaged their property rights and was thus illegal. The patent term extension was legally obtained and the patentee followed their legal advisors. Their whole business plan was based on the patent term extension that was granted.

The Ruling

The interim period is covered by Section 22 of the 7th amendment:

“(a) The rulings of the Law, including Section 164a and Section 18 apply to pending requests for extension periods that were applied for before this law comes into effect, providing that the basic patent has not yet lapsed.

(b) Despite that written in part(a) above, the period of patent term extensions that issued prior to this amendment entering into effect, will not suffer due to them not fulfilling the constraints of parts (5) and (6) of Section 64(d) of the main Law, as it appears in part 3 of this law.

On the face of it, the interim period applies to the present case, where the patent term extension was granted on 5 June 2005, and the patent would have lapsed on 6 june 2010, which is after the amendment entered into force in January 2006. That said, the patentees claim that this is illegal in that there property rights are retroactively cancelled.

The Commissioner noted that this was not the first time that the validity of the various amendments to the patent term extension of the Patent Law has been challenged. See for example 70390 Wyeth vs. Dexcel LTD (ruling by then Deputy Commissioner Axelrod), 83148 Roche Diagnostics GmbH (ruling by then Commissioner, Dr Meir Noam). In those rulings the interim arrangement and its legality in the face of Section 8 of the 1980 Basic Law “Human Honour and Freedom”.  In those cases, it was ruled that the interim arrangement was legal and did not contravene the property rights enshrined in the Basic Law.

Without entering the basic issue of retrospective legislation, it is clear that the interim arrangement includes balances. In Wyeth, Axelrod summarizes “in all cases where there is a point in time that legislation comes into effect, there will always be parties that find themselves on the right and wrong sides of this time period.”

Similarly in Roche, Dr Noam ruled that the entire edifice of Intellectual Property is built on balances between competing interests, and the legislators are allowed to periodically change the point of balance. This is still the case if the balance is to address the disadvantage of the Israel generic drug industry. Furthermore, he went on to rule that interim periods are sometimes to address discrimination against one party or another, and sometimes simply to enable a smooth transition from one regime to another. Although the interim period has to be constitutional, judges should minimize their interference with legislation. (3734/11 Dodian et al.. vs State of Israel).

The current Commissioner, Asa Kling could not see justification in deviating from his predecessors regarding their positions concerning the interim period. He also noted that this wasn’t an issue of the interim period at all, but of the whole amendment, which moved the point of balance in favour of the generic industries.  Since the court had accepted the legality of the amendment in Lundbeck I and Lundbeck II, Novartis and Neurim he considered the issue moot. It is for the legislative body to determine the correct balance between competing interests, and he should be very careful before encroaching on that power. Particularly concerning the economy, one should be particularly circumspect. It is not for the courts to determine economic policy, determine economci preferences or to change internal balances. see 4769/95 Menachem vs. Ministry of Transport and 3145/99 Bank of Israel vs. Hazan.

The Commissioner noted that the amendment was not being challenged, implicitly accepting that the balance struck was fair. Rather, the issue was only that of changing the period. Anyway, the Supreme Court has noted that adversely affecting predicted sales was not to be considered as detrimentally affecting property rights, and Joran’s affidavit was insufficient to base a counter-claim.

The Commissioner also noted that the amendment itself was amended again in Amendment 11 of 2014, although this does not materially affect the issue.

Section 64(9)a states that the Extension period will remain in force, subject to Section 64(10), for a period comparable to the minimum period of any extension granted to the basic patent in a country having patent term extensions. Section 64(10) states that despite Section 64(9), (3) the patent term extension will lapse no later than the period under which the first patent term extension lapses in on a recognized country.

There is no argument that the US patent was extended for 1492 days and lapsed on 7 July 2013. This was the first patent to lapse and is the shortest period of any extension allowed.

Both Holland and Joran claimed that there was also an additional six months pediatric exclusivity period in the US . The Commissioner rejected this claim noting that Section 64(10)3 relates to the patent term extension and does not relate to other exclusive rights. This interpretation is in accordance with the ruling concerning Kirin-Amgen, Inc. 110669.

As the request for cancelling the further extension was accepted, the claims concerning the equitable behaviour of the patentee were considered moot.

In light of the above, Commissioner Asa Kling ruled that the patent in question will lapse in July 2013 and notice of this will issue in the July 2014 journal.

Israel Patent Number 94634, The Association of Israeli Pharmacists vs. Sir Roy Calne  and Wyeth, Ruling Asa Kling 13, July 2014.

 

 

 

 


Under What Grounds Can A Mark Owner Require A Party Filing to Cancel a Mark to Post a Bond for Expenses?

August 17, 2014

bond lighterfelix lighter!

Briko Burns You More LTD has a registered trademark for HN covering lighters in class 34.

Tranmirian Hamias M’yeri LTD filed a cancellation proceedings and Briko responded to a cancellation request from Tranmirian Hamias M’yeri LTD.  to post 70,000 Shekels to cover legal expenses should their attempt to have Israel TM 245007 cancelled fail.

At the time the request was made, the parties had both files statements of case and Tranmirian had already filed evidence.

The request to post costs was based on legal precedent. Briko argued that as a rule, companies should post bail, and the onus is on the company to persuade the courts that this is not necessary. The Company Register lists  Tranmirian as not keeping the law since for 6 years they haven’t paid their company fees. Briko argued that this is sufficient to show that  Tranmirian is not on a sound financial footing.  Briko further argued that  Tranmirian have been using a wrong address which further complicates collecting should Briko win.

Tranmirian countered that none of the above was supported by an affidavit and this alone should be sufficient to have the request thrown out.  Tranmirian claims to be a law abiding company that pays its debts and that the missing fee to the company register was an oversight that has no been attended to.  Furthermore Briko themselves have a similar debt to the companies register!

The wrong address was a typographical error. The correct street was identified, but in the wrong city (Haifa instead of Nahariya). This has also been corrected. The firm denies any liens or mortgages and submitted an accountants letter to the effect that it could settle any bills if it lost. Furthermore, the requested 70,000 deposit was disproportionate to expent costs.

In her decision,  Ms Yaara Shoshani Caspi ruled that requesting a bond was legitimate if there were reasoanble grounds to conclude that an opposing party would not be able to pay their bill. A debt to the company register is not sufficient, and certainly where it is settled on being brought to the attention of the party in question. She concluded that there were insufficient grounds to require Tranmirian to post a 70,000 Shekel bond and she therefore rejected the request and ordered 1000 Shekels costs against Briko.


Inventor Compensation Request Frozen Pending Bagatz Decision in Barzani vs. Iscar

August 17, 2014

anonymous

The Committee for ruling on employee compensation for a service invention has agreed to freeze the proceedings pending whether or not the Supreme Court decides to hear Barzani’s appeal.

The identities of the parties of the case in question are censored, and the decision is published as Ploni (i.e. the Israel equivalent of John Doe or A. N. Other) against the Company (in process of disbanding), so it appears that the employer company is in the process of being dismantled. We therefore suspect that the inventor is unlikely to receive much in the way of compensation.


Voyager, It’s a Decision Jim, But Not as We Know It

August 17, 2014

voyager

Accel Telecom Ltd. filed Israel Trademark Application Number 251612 for Voyager”.

The mark was filed for the following goods: Fixed car phones and connected smart car phones; all included in class 9, and for telecommunication services, namely, providing electronic telecommunication connections, namely, providing voice and data wireless communications connections to enable users to transmit, reproduce, receive, access, search, index and retrieve data namely, images, sounds, text, movies and animations between mobile communication devices and computer communication networks, the Internet, information services networks and data networks; Telecommunication services, namely, telecommunication access services, communication by means of mobile phones, cellular telephone communication, mobile telephone services; all included in class 38.

The mark was accepted on 26 February 2012 and an opposition was filed by Plantronix Inc. on 28 May 2013,

On 27 March 2014 the list of goods was changed to Electronic apparatus, namely communication apparatus, telephones, mobiles, modems, and routers for communication apparatus; all included in class 9.

Somewhat confusingly, the decision states that a decision issued on 9 December 2014. At the time of writing, we consider this date that is in nearly four months time, a little suspect. In that decision, the Patent Office refused to allow the mark to coexist with Plantronics trademark 255989 which is an identical word mark. Our write up of that decision, by Ms Shoshani Caspi, may be found here.

Beyond the requirements of the Law, Ms Shoshani Caspi gave the parties an opportunity to provide evidence for allowing a coexistence agreement, provided the evidence would be submitted at least 30 days before a hearing on the issue.

On 19 December 2013 the parties informed the Israel Patent and Trademark Office that they did, indeed, desire to submit such evidence, but failed to do so. Despite this, a hearing was scheduled for 5 March 2014. During that hearing an agreement was reached that was acceptable to the parties and to the patent office.

However, on 22 June 2014, the parties merely submitted legal arguments without addressing the issue of confusing similarity.

Citing section 30 of the Trademark Ordinance, Ms Shoshani Caspi noted that in extreme circumstances, the Commissioner could allow two mark owners to use the same mark for the same good, and referenced a number of relevant decisions.

The parties argued that each was using the mark for different goods, sold to different customers via different channels and consequently there was not, in fact, any likelihood of confusion.

In this case, Ms Caspi could not accept the argument since the general case, as stated in section 11(9) is that confusingly similar marks cannot be allowed, and in this case the two marks are identical word marks for the same word “Voyager”.

One mark lists the foods as car phones and smart phones in vehicles, and the other as telecommunication equipment, such as earphones, computers and telephony communication equipment, adapters and battery rechargers, so both marks cover car phones. Indeed, the mark in question also covers remote telephony equipment under Class 38.

Ms Shoshani Caspi rejected the argument that in practice, Accel makes car phones and Plantronix makes ear-phones, since she considers these goods complimentary and thus still confusing to the public as to the source thereof.

The parties argued that whereas allowing Aroma to be used by more than one vendor of coffee and cake, was confusing, the current situation was more similar to Great Shape and referred to the 2003 decision concerning marks 107479 and 105968. Ms Shoshani Caspi rejected this argument. She also rejected the argument that since the distribution channels were different, there was no likelihood of confusion as the same customer could conceivably purchase both products.

Citing the Eshel – Yotvata Eshel Supreme court decision (which quoted Friedman p. 431) , she went on to rule that as defender of the public interest she could not allow coexistence, and she referred the case back to the parties to submit evidence in the ongoing opposition.

Decision re Voyager coexistence, Accel Telecom vs. Plantronix, ruling by Y. Shoshani Caspi, 20 July 2014.


AXXON Trademark Cancelled Despite Shoddy Research, But Serves Brimag Right

August 17, 2014

Axxon

Brimag Digital Age LTD own Israel Trademark No. 154869 in Class 9. Taser International LTD filed a cancellation proceedings on 12 September 2013. The owners of the mark did not respond and so Taser was given an opportunity to substantiate their request. On 19 March 2014, Taser  submitted their evidence, including an affidavit from Daniel Ben-Yishai, a trainee attorney at PCZL, the legal representatives of the Applicant for Cancellation. Notice of the submission of evidence was sent to the mark owner on 23 March 2014.

According to the Affidavit, on-line searches at the mark owners web sites http://www.brimag.co.il and http://www.brimag-systems.co.il on 11 September 2014 and 4 March 2013 failed to uncover any mention of the mark in question. Computer print-outs of the searches were attached. Ben Yishai testified to having phoned Brimag’s information center and their Customer Service and Replacement Parts line and they were unable to provide details of any part carrying the AXXON name.

RULING

Section 41 of the Trademark Ordinance allows any party to initiate cancellation proceedings against any mark not in bona fide use over three years prior to the request for cancellation. It is, of course, difficult to prove that something has not happened, but the mark owners were informed of the cancellation request and did not respond. Although the burden of proof is with the party requesting the cancellation of the mark, this burden of proof moves from side to side as the proceedings progress.

The Arbitrator of IP, Ms Yaara Shoshani Caspi criticized PCZL for using a trainee to look into usage and not a private investigator with some training, and considered the evidence as having low value. Nevertheless, in view of the lack of response from Brimag, she ruled that the mark be cancelled and also ruled 2000 Shekels costs against Brimag.

COMMENTS

Ms Yaara Shoshani Caspi’s criticism of PCZL’s sloppiness is correct. A simple Google search of the Internet for AXXON and BRIMAG proves that the mark is actually in use.  It is related to in the 2012 financial reports for Brimag: http://lxsrv1.bizportal.co.il/bizportalnew/bursamess/gif/e05310.pdf (see page 23 for example. this came up in a very simple Internet Google search.

There are various special offers for AXXON steam irons where Brimag is apparently the importer and service provider. See for example:

here, here and here.

The mark in question is actually for electromechanic and electronic apparatus included in class 9; apparatus for recording, transmission or reproduction of sound or images; measuring, signalling, checking (supervision) apparatus; magnetic data carriers; videocassette recorders; televisions; projectors; video cameras; facsimiles; amplifiers; loud speakers; compact disc players and recorders; laser disk players; receivers; digital versatile disk (DVD) players; stereo systems; minidisk players and recorders; discmans; radios; telephones; headphones; microphones; parts and accessories for the above mentioned goods; all included in class 9.

Arguably, steam irons are not covered by the class. That as may be, trainee lawyers do not have the training to provide evidence of non-use. Their supervisors should indeed be aware of this, and should provide guidance. Nevertheless, Brimag (and their representatives Wolf Goller Bregman) did not respond to the request for cancellation and so whether or not the mark was not in use over the past three years, they cannot really complain against this decision.

Although the search I did took two minutes, I don’t think that arbitrators at the Israel Patent and Trademark Office are required to do their own inquisitorial inquiries and can generally be expected to simply weigh up the evidence provided. If Taser now files their own mark, Brimag can show prior use, but that would require them to be trademark savvy and this does not seem to be the case.


Camtek Gets A Knockout Against Orbotech

August 14, 2014

CamtekOrbotech

Camtek and Orbotech are both Israel based manufacturers of imaging systems for the semiconductor industry.

After requesting modified examination under Section 17c of the Law, Orbotech received a notice of allowance for Israel Patent Number 179995 titled “Systems and Method for Inspecting Patterned Devices Having Microscopic Conductors” which published for opposition purposes back on 31 October 2010.

On 31 January 2011 Camtek filed an opposition.

Camtek claimed that the system and method use image analysis based on Darkfield and Brightfield illumination, using standard elements, and thus the claimed invention lacked novelty and inventive step over the prior art including US 6,947,151, IL 81450,  US 5,969,372,  WO 99/10730, HandBook for Machine Vision, 2006 and Optical Consideration for Machine Vision, 1985.

Furthermore, Camtek claimed that Orbotech had failed to make earlier Orbotech patent no. IL 81450 of record in this case, contravening the duty of disclosure under Section 18 of the Israel Patent Law and showing inequitable behaviour.

The Applicant countered that the invention did not relate to a new principle or to a new component but rather to a new system, in that the arrangement of components provided the invention.

Inter Partes Opposition to 179995 titled “Systems and Method for Inspecting Patterned Devices Having Microscopic Conductors”

As to the Duty of Disclosure, Orbotech went on to argue that the cited art was insufficient to invalidate the invention as claimed.

Experts representing both parties submitted affidavits and the applicant managed to have some clauses cancelled as illegimate widening of the grounds of opposition. The experts were cross-examined.

Ruling

The application includes 30 claims, of which claims 1, 11 and 22 are independent.

The system, as claimed in claim 1 is directed to:

An inspection system operative to inspect patterned devices having microscopic conductors, the system comprising:
at least first and second light sources, which illuminate a patterned substrate, said patterned substrate defining a substrate plane, wherein said first and second light sources define first and second paths of illumination, respectively; wherein said first and second paths of light are mutually non-parallel in a plane parallel to said substrate plane;
a camera viewing a location of a candidate defect on said patterned substrate, and acquiring thereat at least one image of the location, said at least one image being illuminated by illumination from at least said first and second light sources; wherein said camera defines an optical axis and said first and second paths of illumination are offset from said optical axis;
and wherein a response to illumination supplied along said first path of illumination is differentiable from a response to illumination supplied along said second path of illumination; and a defect classifier operative to receive said at least one image and to distinguish therewithin a candidate defect caused by a particle foreign to said patterned substrate from other types of candidate defects.

Claim 11 is directed to a corresponding method and claim 22 to the system of claim 1 being able to differentiate between cuts and other defects.

The opposition proceedings focused on the meaning of the term used to describe the first and second paths of light, described as being “mutually non-parallel in a plane parallel to said substrate plane“. The Applicant claimed that this relates to the Azimuth angle, and the Opposer noted that the term Azimuth Angle is not mentioned anywhere in the claims and is first introduced in the affidavit of Orbotech’s expert witness.

In the ruling, Deputy Commissioner Jacqueline Bracha cited 345/87 Hughes Aircraft Company vs. State of Israel to explain how claim construction should be achieved in Israel. Essentially, claims, are to be interpreted like any other clause in any other document. The specification as a whole is to be used to explain the claims, while noting that the claims are intended to be understood by persons of the art, and with a little leeway to account for the Applicant’s intention, falling back on dictionaries whilst acknowledging that the Applicant may be his own lexographer.

Based on the above, the Deputy Commissioner went on to rule that ideally, claims should be self-explanatory and understandable to persons of the art without reference to the specification. Even where a full understanding is based on other parts of the specification, the claims should be sufficiently clear and concise, and this is the purpose of Section 13 of the Law and clause 20(a) 3 of the regulations.

Ms Bracha went on to claim that this approach reflects the Supreme Court ruling 2626/11 Hasin Esh Taaiyot (lit. Fireproof Industries) vs. Koniel Antonio (Nevo 11/4/13).

“secondly, where a legal disagreement relates to a monopol or its boundaries, the specification will serve as a support for explaining the claims.” …. “from this, it transpires that the specification cannot protect details that are not mentioned in the claims. In other words, the monopoly went extend beyond the scope of the claim-set. This principle protects the public interest in that it provides clarity to that protected by a patent and allows the public to do research and development on those elements [described but] not protected.

Ms Bracha went on to suggest that as with Contract Law, any ambiguities should act against the Patentee since the Patentee is responsible for them.

Quoting from recent US decision, Nautilus Inc. v. Biosig Instruments, Inc. 572 US (2014):

“At the same time, a patent must be precise enough to afford clear notice of what is claimed, thereby “‘appris[ing] the public of what is still open to them.'”…patent system fosters “an incentive to be as vague and ambiguous as you can with your claims” and “defer clarity at all costs”). Eliminating that temptation is in order, and “the patent drafter is in the best position to resolve that ambiguity in … patent claims”.”

The ruling now gets very technical regarding what light sources can be considered parallel and where Darkfield fits into the picture, at different azimuth’s and refers to Figures attached  to Golan’s affidavit that, unfortunately, are not reproduced.

The Applicant, does, however, refer to the specification as well.

As to Novelty, the Deputy Commissioner cited Section 4 of the Law and Hughes Aircraft section 45. For comparative purposes, she cited a UK ruling:

“In order to anticipate a patent, the prior art must disclose the claimed invention and (together with common general knowledge) enable the ordinary skilled person to perform it.”

(H. Lundbeck A/S v. Generics (UK) Ltd. & Ors [2008] R.P.C. 19, par. 9).

the Opposer noted that a Supervision system was available from Amitech prior to the priority date and that this is a prior art publication in Israel (in the US and some other places, there is a grace period).

The functionality of this earlier system was examined and was compared to the claimed invention. The cited art was then examined in turn.

The Deputy Commissioner ruled that claim 1 was anticipated by IL 81450, specifically by claims 11-13 thereof, and thus lacked novelty.

Claim 2 merely adds a camera. to photograph defects.

Claim 3 adds a classifier of defects but the nature of this is not explained and the term classifier per se is too broad to be inventive.

Claim 4 merely slightly improves the functionality of the classifier and is not inventive over claim 3.

Similarly Claim 5, which is able to identify dust particles, merely slightly improves the functionality of the classifier and is not inventive over claim 3.

Claim 6 introduces using two sources of monochromatic light having different wavelengths. This is considered obvious my be combination of IL 81450 and WO 99/10730.

Claim 7 indicates that the two light sources do not act together and is not considered inventive over claim 1.

Claim 8 relates to perpendicular light sources which is preempted by IL 81450.

Claim 9 was not specifically challenged by the Opposer and appears to have been supported by Fig 4D and by pages 11 and 12 of the specification. Probably because the Opposer didn’t challenge this, the Applicant’s expert witness did not relate to this claims. Somewhat oddly in my opinion, the deputy Commissioner felt that the onus was on the applicant to prove novelty and he had failed to do so, so this claim was struck as well.

Claim 10 simply applies claim 1 to an array of electronic components and neither describes the equipment or the method, so was considered anticipated and not based on the specification and thus rejected under sections 4 and 13. Here again, I am at a loss to understand the relevance of section 13.

Claim 11 relates to a method of using the system of claim 1 and the reasoning used against claim 1 is relevant here as well. Claim 12 relates to claim 11 using Darkfield, claim 12 to claim 11 using an AOI system and since the system described is an AOI system, this adds nothing.   Claims 14 to 21 are method equivalents of claims 3-10 and claims 22-25 claim the system of claim 1 where the defects detected change and this does not render the equipment or the method new. Claims 26-30 relate to the substrate being examined and this also does not render the equipment or the method new.

Equitable Behavior

The background of the application relates to the supervisor and to the US 6,947,151 patent, so failure to mention these in an information disclosure statement was not deemed critical. However, IL 81450 is owned by Amitech and thus known to them, yet was not mentioned. Apparently the Opposer did not claim inequitable behavior (to me it seems odd that Adv. Levit would miss this).

Mentioning the Supervisor in the background is somewhat of a problem since the Examiner cannot easily determine what this includes. The Deputy Commissioner hypothesizes that submission of a product manual might have been in order under section 20(a)1, but the Examiner did not ask for this and she does not see that the law provides for sanctions against the applicant. The sanction for inequitable behavior is defined in Section 18c and relates to the duty of disclosure of documents and here, the Applicant fulfilled his obligations. Citing 14/92 Plasson Maagan Michael vs. Ferdy Freint, the Deputy Commissioner noted that the duty of disclosure is ongoing up until allowance and that failure can result in more than compensation [i.e. that an issued patent may be deem unenforceable or voided]. Mentioning equipment in the background is insufficient. The background should have included a description of the functionality.

That said, the claims are all struck down as lacking novelty or inventive step and the efficiency of the proceedings may be considered in terms of the amount of work required by opposer to obtain and describe this evidence when costs are awarded.

The opposition was accepted and the patent application was cancelled.

Israel Patent Number 179995 titled “Systems and Method for Inspecting Patterned Devices Having Microscopic Conductors” to Orbotech, Opposed by Camtek, ruling by Deputy Commissioner Jacqueline Bracha, 20 July 2014

Comments

I don’t remember the quote from Hasin Eish, but I think the Supreme Court ruling is not as clear as it could be. One can do research and development on patented elements protected by claims, and one can manufacture and sell non-claimed elements that are described.

Claim 1 cannot fairly be read as relating to perpendicular azimuths. This could be a flaw in the drafting, but also may indicate that the applicant was unaware of what they wanted an invention on at the time of filing. The Israel Law used to enable suing for infringement of ‘the pith and marrow’ of the invention as described, and if it is clear from specification that something not clearly claimed was intended, the claim construction for enforcement purposes may work slightly differently. At the opposition stage, claim 1 does appear too wide and it might, perhaps, have benefited from narrowing and clarifying amendments.  I am a little unhappy at claim 9 being invalidated because of the failure of applicant to show patentability. I think that in both examination and opposition, there is a presumption of novelty and inventiveness to the extent that, although not yet enforceable against third parties, during examination and opposition proceedings, the onus is on the Examiner and then the Opposer, to challenge the validity by bringing relevant prior art and logical arguments.

Nevertheless, the decision seems to be generally thorough and well reasoned.


Israel Patent Office Awards Costs of 281,651 Shekels for Unsuccessful Opposition

July 14, 2014

costs

Rafael Advanced Weapons Systems LTD filed two patent applications, IL 149934 and IL 180478 “Airborne Reconnaissance System”, which were opposed by Elbit Electrooptical ELOP LTD.

IL 149934 was filed on 30 May 2002, and on allowance, published for opposition purposes in May 2007. Elbit filed an opposition, as did Elta – Israel Aircraft Industries.

Because of a divisional application,  IL 180478, the opposition was frozen until the second case was allowed and published for opposition purposes on in November 2009.  Both opposers opposed both applications. Since the cases were identical, the oppositions were combined.  The two cases were heard together, although they weren’t combined in a single proceeding.

When the oppositions were eventually dropped, the applicant applied for 711,263.79 Shekels in costs, providing an itemized table of charges for each action.

After reviewing the table and noting a mistake wherein 54,330.25 Shekels was listed instead of 543.3 Shekels, the opposer suggested that a total of 25,000 Shekels would be more appropriate.

In her ruling, the deputy commissioner ruled that for freezing the first opposition until the divisional application published, no costs were appropriate. On the other hand, she considered the full 24,180.73 Shekels charged for the second period, after the divisional application was allowed as being fairly charged.

She also allowed 100,470.58 Shekels for filing corrected statements of case, 150,000 Shekels as reasonable for the submission of evidence and 7000 Shekels for the charges for requesting costs. The total costs allowed were thus  281,651 Shekels, to be paid within 30 days, or interest would be accrued.


Costs for Trademark Opposition

July 14, 2014

visco gel 1visco gel 2

Aminach LTD filed Israel trademark application No. 233949 Visco-gel for Mattresses, beds, sofa beds, armchairs and furniture for bedrooms; all included in Class 20.

The Health Center D. A. LTD. opposed the mark. On 12 January 2014, the opposition was refused and the trademark was registered.

Aminach now filed a costs request for 81,391 Shekels. This included 78,739,45 shekels  for 52.7 hours work of lead counsel, 3.6 hours work of a junior lawyer, and 1.93 hours work of a trainee.  The difference of 2652 Shekels covered courier expenses, printing costs, fax costs and recording the hearing.

The Health Center D. A. LTD. considered the costs charged as exorbitant and referred to the minimum recommended fee established by the Israel Bar for oppositions, which, in 2014 stood at 1859 Shekels, which is rather less.

The Health Center D. A. LTD. also noted that there was no contract provided that set out a fee scale or tax invoices showing that the fees were indeed paid. Finally, the respondent also noted that costs were awarded in the original decision and there was no justification to charge this twice.

THE RULING

The Commissioner reiterated that an applicant who overcomes an opposition is entitled to payment of legal costs. He did not consider that the amount of time spent was unreasonable for the amount of work done, nor did he consider that there was a difference between pro forma invoices and actual tax invoices.

The Commissioner did not find the minimum charges established by the Israel Bar were binding on attorneys, nor on the Patent Office when deciding fair costs.

Since costs of 7000 Shekels were awarded for a specific action in the original decision, the costs of 13,480 Shekels that were calculated for the same action at this stage was considered as double billing.  Furthermore, costs of 1440 Shekels for postponing the hearing were considered unnecessary since the opposer didn’t have a problem with this, so this fee was canceled.

The Commissioner ruled that the remainder of 66, 400 Shekels (nearly $20,000) should be settled within 30 days, or the sum would be index linked and would accumulate interest.

COMMENT

The term visco-gel relates to material properties and is descriptive. I don’t believe that mark should have been allowed. The costs are high, but not unreasonably so.


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