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.


Opposition Withdrawn, But Commissioner Continues Anyway

July 14, 2014

spraying device

Israel Patent 204070 to Reckit and Colman titled “SPRAYING DEVICE AND METHOD OF USING SAME” relates to a spray apparatus with a safety feature to check that it is not refilled by a third party. It was allowed, and published for opposition purposes on 28 February 2013. On 28 May 2013, Sano Bromium Factory LTD.  filed an opposition, claiming that all the claims were non-patentable due to novelty or obviousness considerations in light of WO 2005/113420 and WO 2005/009325. Furthermore, Sano-Bromium argued that the claims were poorly worded and unclear and lacked support from the specification.

Sano-Bromium subsequently withdrew their opposition on 24 December 2013, and the opposition file was closed. However, under Section 34 of the Patent Law, the Deputy Commissioner put herself in the shoes of the opposer and compared the claims with the two citations and reasoned that they were, indeed, unpatentable.

The Deputy Commissioner published a closely argued comparison between the claims and the two citations and provisionally refused the patent, giving the applicant 30 days to respond.

COMMENT

The purpose of Section 34 is to prevent patents issuing when they shouldn’t. The Deputy Commissioner is correct to analyze the grounds for opposition on their merits and to consider whether the opposition should continue even if the opposer loses interest.


Sahara

July 10, 2014

sahara

Tambour and Nirlit are both Israeli paint manufacturers.

Tambour filed a trademark for Sahara as a shade of paint. They filed for accelerated examination, and three weeks later the mark issued for opposition purposes.

The opposition period is three months, and on the final day, an examiner published a decision to allow the mark.

Nirlit submitted a mark for Sahara themselves on the final day of the opposition period and then requested that Tambour’s notice of allowance be cancelled, and the marks be considered as competing marks. The Examiner cancelled the mark and both sides have been fighting as to whether the cancellation was correct, whether it should be considered as void, and whether the court of the Israel Trademark Office is the correct jurisdiction or whether Tambour should have to appeal to the District Court to have the allowance reinstated.

The wording of the ordinance refers to “a competing mark being filed before a pending mark is allowed”. The legal issues boil down to whether decisions can be cancelled and what the word before means.

Other issues raised included whether Nirlit should have informed Tambour of their filing and of the cancellation of the Notice of Allowance. Did Tambour have rights to request amendments to Nirlit’s application?

THE RULING

The Adjudicator of Patents and Trademarks, Ms Yaara Shoshani Caspi did a fine piece of analysis and more or less sorted out the mess.

According to the ruling, trademark decisions are administrative decisions that can be withdrawn. The term “earlier” should be interpreted as meaning up until midnight of the previous day.

According to the ruling, the Examiner was not incorrect to allow Tambour’s mark, but was wrong to cancel the decision to allow it once it had issued. This decision is an administrative decision that can be withdrawn.

Once the marks are not co-pending, there is no competing marks scenario. All interim rulings are ex-parte. There is no obligation to inform the other party who has absolutely no standing.

The mark is retro-actively considered as published and Nirlit had two days left to file an opposition.

No costs were awarded to either side.

COMMENT

I think this ruling is the best of a bad job.  I don’t think we need to interpret earlier as the previous day. the notice of allowance for Tambour’s had issued before Nirlit’s was entered into the system. One hand does not need to now what the other is doing. All Examiners need to check what has been done.

Since there  was no pending mark for Nirlit at the time that Tambour’s mark was allowed, the notice of allowance was correct. It can happen that one department is more efficient than an other.

Retroactive publication for opposition purposes is problematic since in addition to Nirlit, it is not inconceivable that a third party may have a problem with the name.

Western Sahara is a disputed territory and most of the players involved do not recognize Israel. I am not sure that that will necessarily stop them from complaining about the place name being used to denote a shade of paint.


Deadline for Opposition Passes, but Trademark Opposition Accepted as a Cancellation

July 10, 2014

It is well established that opposers have three months to file trademark oppositions. Once this deadline has passed, the correct procedure is to file a cancellation request. There are not many differences between the two proceedings, but the onus changes to an assumption of validity.

Marco Pietroni filed a Madrid Protocol trademark application that specified Israel as one of the countries covered. The mark, 251203 is for the word “Stoneglass” and was filed in classes 19 and 21 for Glass element for building, glass slabs for use in building, plate glass for building, sheet glass for use in building, glass panels, glass tiles (not for roofing), glass for building, and in class 21 for sheet glass (except glass used in building), sheet glazing materials (other than for use in building), glass panels (semi-finished article).

The mark was allowed on 7 November 2014, and a notice was sent to the WIPO that unless an opposition was filed by 28 February 2014, the mark would issue.

An opposition was filed on 2 March 2014 under Section 56 of the trademark ordinance, and a copy, in Hebrew was sent to the International Registry that day.

Since no response was received, the mark was considered cancelled.

I examined the register.

The record is as follows:

Changes
יומן שינויים
תאריך הפרסום
תאור (לועזית)
תאור (עברית)
מהות הארוע (לועזית)
מהות הארוע (עברית)
תאריך הארוע
Publication date
Description (English)
Description (Hebrew)
Nature of event (English)
Nature of event (Hebrew)
Date of event
28/11/2013
Accepted
קובל
07/11/2013
Commencement of opposition procedure
פתיחת הליך מסוג התנגדות
02/03/2014
Cancellation of opposition procedure
סגירת הליך מסוג התנגדות
24/06/2014
Cancellation – abandoned
נמחק – הוזנח
24/06/2014

Under regulation 37 of the trademark regulations, since more than two months had passed and the trademark owner had not responded to the opposition, the mark was considered abandoned.

In other words,  an opposition procedure was initiated despite three months having passed, and on applicant failing to respond, the cancellation procedure was canceled and the mark was registered as abandoned.

COMMENT

In my opinion, this is a miscarriage of justice. For whatever reason, the opposition was filed too late. It should have been ignored. Since it was too late, there is no reason why the applicant (who does not have local representation) should have responded.

Regulation 37 follows regulation 35. The requirement to respond to an opposition presupposes that the opposition was timely filed.

In the Suprene case, the Deputy Commissioner Ms Jacqueline Bracha ruled that she does not have authority to extend the three month drop deadline for filing oppositions and that if the deadline is missed, a cancellation proceeding is in order.

One wonders why the Adjudicator Ms Shoshani Caspi considers that she does have this authority?

We cannot even tell if the International register informed the applicant of the late filed opposition. Generally late submitted documents are not considered.


When a mark under Opposition is assigned to a third party

July 10, 2014

puss in boots

Israel Trademark Number 244831 is for the word mark “PAMA” and covers Clothing and shoes for women, grils and grown up grils only; all included in class 25. The mark is owned by Abedel Razzak Ebido, a resident of Hebron.

We assume that grils are girls, and grown up grils are maidens or young ladies.

PUMA SE applied to have the mark canceled. Abedel Razzak Ebido meanwhile assigned the mark to another family member and forgot to inform the opposers of this. Attempts to argue that he forgot, and that the assignment was in the family so didn’t matter were rejected. PUMA were awarded 1500 Shekels in legal costs.

COMMENT

Since the District Court has argued that Palestinian youth are entitled to their rip-off brands, allowing four stripe Adidas trainers, it is important that brand owners fight mark like this.


When an Israel Patent Lapses Due to Lack of Funds

July 10, 2014

resuscitate

In an appeal to restore lapsed patent number 177522 to Yad Conena LTD., the director Shmuel Savyon claimed that the patent had lapsed due to lack of financial resources. this wasn’t the first time that the patent had lapsed, but on a previous occasion, it was restored after then Deputy Commissioner Noah Shalev Smylovich was convinced that the patent had become abandoned unintentionally.

Section 60 of the Israel Patent Law allows a lapsed patent to be reinstated if the patent lapsed in reasonable circumstances against the patentee’s wishes, and if, on learning that it had become abandoned, the patentee takes immediate steps to rectify the situation.

Deputy Commissioner Jacqueline Bracha considered that in this case, the patentee was aware that the patent had lapsed and had made a conscious decision to allow the asset to lapse due to lack of funds. The patentee didn’t suddenly learn that the patent had lapsed, but rather was aware of the situation. When circumstances changed, he tried to revive the case. This is beyond the scope of Section 60.

COMMENT

I think the Deputy Commissioner is correct in her interpretation of the Law. However, I note that other jurisdictions are more flexible, and though expensive, it is sometimes possible to revive abandoned patents under such circumstances elsewhere. Thankfully most of my clients are in good financial shape, but I have a couple of cases in Europe and the US where the applicants have ran out of funds but the situation has improved. In general, I do whatever I can to help such clients, but only after receipt of anticipated costs up front.

 


What Happens When One Party of a Jointly Owned Application is Not Interested in Continuing with Examination?

July 7, 2014

Three parties: CNRS, University of Pierre and Marie Curie, and the Centre Etudes et de Valorisation des Algues, Ceva filed a national phase of FR2011/051384 into Israel as IL 224677.

On three separate occasions, the Centre Etudes et de Valorisation des Algues, Ceva indicated a lack of interest in the European and Israeli applications being examined. In the circumstances, the other two parties applied to continue prosecuting under Section 25, with their request supported by a statement from Ludovic Hamon the VP of CNRS.

RULING

In cases of multiple owners, Section 25 allows for a jointly owned patent application to be prosecuted in accordance with the desires of only some of the parties, but the Commissioner will only abandon an application or patent at the request of all of the parties.

Section 25 has not been clarified by the case law, and the accompanying explanation to the Law from prior to its legislation, does not relate to this section.

The Deputy Commissioner suggests that the purpose of the Law is so that a pending application may be moved forwards without agreement of all parties, so long as they are all kept in the picture.

In this case, despite the disagreement on ownership, two of the applicants are willing to the prosecution of the application without the involvement of the third party.

Since the Commissioner cannot see how the third party can lose from this, she ruled that examination should continue, with the third party being informed of developments.

Whereas all applicants may submit for an application to be abandoned, there is apparently no mechanism for one applicant of many to disengage himself from the examination process. Consequently, the Deputy Commissioner suggests that she should act as per the Law of Chattels. However, without clear indication from the third party that they are relinquishing all rights in the application she is unwilling to do more than simply to follow advice of the other parties.

Ruling, Jacqueline Bracha, 30 June 2014

COMMENT

This type of case could get very messy. Any of the joint owners can license the patent if allowed. Where parties are jointly owned, one should try to have clear contractual obligations in place. In this sort of case, ideally the interested parties should try to buy out the rights of the disinterested party.


Opposition to IL 138831 “Gaze Actuated Information System”

July 3, 2014

heads up display

Rafael LTD. filed Israel Patent Application Number 138831 for a “Gaze Actuated Information System” in 2000 which was allowed in July 2007 and Elbit filed an opposition within the prescribed three months.

Asaf Ashkenazi, a director and VP MOP of Elbit and Mr Naftali Maimon, a marketing development worker at Rafael filed sworn statements. Mr Asaf Ashkenazi attempted to file an additional statement in response to that of Mr Naftali Maimon, but Adjudicator of  IP, Ms Yaara Shoshani Caspi threw out statements regarding the lack of utility and lack of industrial applicability that were considered as beyond the original Statement of Case.

In 2010, then Deputy Commissioner Noah Shalev-Smylovits heard the witnesses and their cross-examinations. The Commissioner Assa Kling decided to rule on the evidence submitted and the transcripts of the hearing.

Apparently the system provides audible warnings to the pilot, follows the pilot’s eye movements and simplifies the visual display. The system results in lighter helmets and simpler heads-up displays than those previously known.

The patent was sought on tracking the pilot’s eyes rather than in directing the pilot’s gaze. The claim set included three independent claims for the system and method and 15 dependent ones.

Claims 1 and 14 are as follows:

1. A method for providing a pilot with information associated with at least one region of a field of view visible to the pilot from within a cockpit without requiring a visual display, the method comprising steps of:

(i)                 determining an eye gaze direction relative to a given frame of reference for at least one eye of the pilot by:

(a)   employing a helmet-mounted system to derive direction information related to a relative eye gaze direction for at least one eye of the pilot relative to a helmet worn by the pilot,

(b)   deriving position information related to a position of said helmet within a cockpit, and

(c)    processing said direction information and said position information to derive said eye gaze direction relative to a frame of reference associate with said cockpit;

(ii)               determining a reference direction relative to said given frame of reference;

(iii)             comparing said eye gaze direction with said reference direction; and

(iv)             if said eye gaze direction and said reference direction are equal to within a given degree of accuracy, generating audio output audible to the pilot and indicative of information associated with said reference direction.

 

14. A method for providing to a pilot confirmation that a weapon system is locked-on to a visible target without use of a visual display, the method comprising the steps of:

(i)                 determining an eye gaze direction relative to a given frame of reference for at least one eye of the pilot;

(ii)               determining a target direction representing the direction relative to said given frame of reference from the weapon system to the target to which the weapon system is locked on;

(iii)             comparing said eye gaze direction with said target direction; and

(iv)             if said eye gaze direction and said target direction are equal to within a given degree of accuracy, generating a predefined audible signal to confirm that the weapon system is locked-on to a target at which the pilot is currently gazing.

Elbit claimed lack of novelty / inventive step and opposed the patent under Sections 4 and 5 of the Israel Patent Law. They cited the following prior art:

[1]U.S. Patent No. 5,583,795  “Apparatus for measuring eye gaze and fixation duration, and method therefor”.

[2] U.S. Patent No. 4,196,474  “Information Display for air traffic Control”.

[3] U.S. Patent No. 4,935,885 “Method and apparatus for determining weight and center of gravity of a vehicle“.

[4] U.S. Patent No. 5,602,543 “Detection system for use in an aircraft”.

[5] U.S. Patent No. 5,978,715 “Apparatus and method for aircraft display and control”.

[6] U.S. Patent No. 5,647,016 “Man-machine interface in aerospace craft that produces a localized sound in response to the direction of a target relative to the facial direction of a crew “.

[7] U.S. Patent No. 3,617,015 מיום 2.11.1971, שכותרתו: “Head-coupled missile-aiming device”.

[8] U.S. Patent No. 5,790,085 “Portable interactive heads-up weapons terminal”.

[9] U.S. Patent No. 5,296,854 “Helicopter virtual image display system incorporating structural outlines”.

[10] U.S. Patent No. 5,931,874 “Universal electrical interface between an aircraft and an associated store providing an n-screen command menu”.

[11] U.S. Patent No. 4,288,049  “Remote targeting system for guided missiles”.

[12] U.S. Patent No. 6,455,828 “Method for remote-controlled combat of near-surface targets”.

[13] U.S. Patent No. 4,449,787  “Night vision imaging system adapted for helmet mounting”.

[14] U.S. Patent No. 4,287,410  “Double purkinje eye tracker”.

[15] U.S. Patent No. 5,726,671  “Helmet/head mounted projector system”.

[16] U.S. Patent No. 4,852,988  “Visor and camera providing a parallax-free field-of-view image for a head-mounted eye movement measuring  system”.

[17] U.S. Patent No. 4,634,348 “Head and/or eye tracked optically blended display system”.

[18] U.S. Patent No. 4,028,725  “High resolution vision system”.

[19] U.S. Patent No. 4,034,401 “observer identification of a target  or other point of interest in a viewing field”.

[20] : “Rash et al, Design issues for Helmet-Mounted Display Systems for Rotary-Wing Aviation, USAARL Report No. 98-32 Fort Rucker, AL: U.S. Army Aerodynamical Research Laboratory, July, 1998″.

[21] Kopp, Helmet Mounted Sights & Displays, Air Power International, Vol. 3 No.1, July 1998, pp. 54-57.

[22] “Wenzel and Foster, Virtual Reality: Principles and Applications, Piscataway, NJ: The Institute of Electrical and Electronics Engineers, 1993.

[23] “Begault et al, Augmented TCAS Advisories Using a 3-D Audio Guidance System, Proceedings of the Ninth International Symposium on Aviation Psychology the Ohio State University, Columbus Ohio, 1997.”

The claims for lack of inventive step were based on single publications or their combination with any one of several others. In other words, Elbit was claiming lack of inventive step n the basis of 1 or 2 publications, but Rafael would have to relate to various combinations and permutations to overcome the objection.

Ruling

In oppositions, the onus is on the patentee to prove patentability.

The issues raised included whether tracking a head position and tracking eye movement were identical, and whether improvements could be considered engineering improvements or inventive ones. The main citations were examined in length. Eventually claim 1 was upheld, claim 14 and its dependencies were rejected, and applicant was ordered to correct a typo in claim 6 which related to 50° instead of 5°.

 


Nu?

June 29, 2014

Vifor Pharam

Galenica AG applied for Israel trademark No. 233011. Vifor Pharma Inc. opposed the request. After both sides stated their cases, they requested extensions to allow negotiations towards a mutually accepted solution.

Eventually, after nine requests for extensions, the Commissioner ordered that further requests be substantiated. Both sides continued to request further extensions based on the ongoing nogotiations. The Commissioner refused to grant additional extensions, and on being requested to reconsider, affirmed this decision.

COMMENT

The mark in question is “vifor pharma” as shown above. One can understand why a company called Vifor Pharma might have a problem with a different company having thier name as a registered trademark. However, an opposed trademark is not registered but is in suspense. I fail to see why the Israel Patent and Trademark Office should have a problem with accepting extension fees indefinately, other than how it affects the statistics in the annual report. If this is the issue, why not simply add a graph to show that delays are with the parties and not the patent office?


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