Israel Patent Office denies authority to retroactively restore the priority period for design registration

October 16, 2011

If an Israel design application is filed within six months of an identical application filed abroad in a Paris Convention country, the Israel application is entitled to the effective filing date of the foreign application.

In Design Application No. 51361 to Serti, the application was filed more than six months after the corresponding foreign application was filed and the applicant petitioned for a retroactive extension of time. Yaara Shoshani Kaspi, the adjudicator at the Israel Patent Office refused the request ruling that the Israel Patent Office had no authority to consider such requests. Consequently, she didn’t relate to the grounds brought.

COMMENT

Shoshani Kaspi is correct. In this instance, there is no indication what the design is, whether the attorney was at fault for missing the date, or if there was an oversight due to something attributable to an Act of God, like an earthquake, or something more mundane like technology failure. Was this a last-minute mistake wrongly assuming the Israel Patent Office was closed on a Sunday, or something similar?

There is no indication what the design in question is, so it is not clear if all is lost or whether the design could be protected by copyright, trademark law or unjust enrichment.

 

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Posted by Dr Michael Factor

Miss Sexy and Miss Sixty not Confusingly Similar

August 10, 2011

Fronsac applied for Israel TradeMark 205879 for Miss Sexy. Iris Line who have a registered trademark for Miss Sixty, opposed the registration. Both marks are for clothing in the same class, but the list of goods is somewhat different.

Iris Line claimed that their mark is well-known, with sales of over $40,000,000 a year worldwide, and that the word sexy is descriptive and lacks inherent distinctiveness. They also claimed that the proposed mark offended public sensibilities.

The Arbitrator of Intellectual Property, Ms Shoshani Caspi ruled that the opposers had failed to establish that their mark fell into the category of a well-known mark and that the nature of the words sexy and Miss were so lacking in distinctiveness that the combination also was.  She also decided that the Israel public would not find the brand Miss Sexy offensive to their sensibilities.

I hope those ladies old enough to be my mother will not be offended by my concurring with Ms Shoshani Caspi that a registration for Miss Sixty is not sufficient grounds to prevent a different applicant from receiving a trademark for Miss Sexy, despite the same class of goods (clothing) and the similar appearance and sound of the two marks.

It seems that for women’s clothing the word Miss is less than distinctive and the meaning of the two words Sixty and Sexy, though in English which is not the first language in Israel, are sufficiently well-known to prevent confusion.

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Posted by Dr Michael Factor

Wrangling over Procedure vs. Substance

August 9, 2011

When Israel trademark application number 218503 for Rodeo in Class 25 (apparel) filed by Weiss Brothers Manufacturing and Marketing LTD published, Wrangler Apparel Corp filed an opposition via Shlomo Cohen Law Offices.

The mark in question is pictured alongside.

An interim ruling by the Arbitrator of Intellectual Property, Yaara Shoshani Caspi, has now published. The ruling addresses the issue of whether, once the sides have agreed to a ruling based on the contents of the file, whether the opposer can file additional evidence.

Ms Caspi seems to accept the principle that in certain circumstances, the adjudicator can stray from the ordinances and allow additional evidence to be submitted, but in general, evidence should be submitted in one go, within the time limits. In this case, she noted that the issuance of the mark has been delayed by a couple of years due to the opposition proceeding, and the opposer has tried to submit additional evidence 7 months after the deadline for so doing.

Hinting at procrastination in bad faith, Ms Caspi ruled that there is an onus on the opposer to justify the deadlines and straying from procedure, which hasn’t been met. She considers the request merely an attempt to improve their case and refused to allow Wrangler to submit additional evidence, and has given them 30 days from the issuance of the ruling to submit their summary.

COMMENT

Since Aharon Barak’s presidency of the Israel Supreme Court, there has been a tendency to allow substantive issues to over-rule procedural ones, and one might have expected the evidence to have been allowed with costs awarded to the applicant to compensate for the deviation in procedure.

As a self-confessed formalist (no doubt reflecting my education is England, and having studied engineering, physics and  Talmud before Israel Law) I am pleased that this request was rejected and that the rules and regulations are given due weight. Furthermore, it is possible, as Ms Caspi  suspects, that the opposer or his counsel are indeed guilty of time-wasting shenanigans. However, it is worth noting that the mark is somewhat reminiscent of Wrangler’s who promote rodeos, and in trademark issues, there is no such thing as closure. It does make sense viewing all the evidence and then ruling to avoid cancellation proceedings and parallel motions through the courts.

It is not impossible that the Wrangler or their counsel were simply disorganized and the evidence should be heard.

The moral of the story here is for opposers to ensure that they get their evidence together promptly and submit it all in good time.

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Posted by Dr Michael Factor

The first Patent Office Circular Under Commissioner Kling

June 28, 2011

In his first Circular, Commissioner Asa Kling has ruled that henceforth, circulars will be numbered consecutively each year, so this circular will be 01/2011 and the next one will be 02/2011, etc.

In the past, circulars were annotated with the initials of the commissioner, and then numbered consecutively. Thus the circulars issued by previous commissioner Dr Meir Noam were numbered M.N.1, M.N. 2, etc. Under his predecessor Commissioner Goldberg, the  circulars were numbered A.g. 1,  A.G. 2, etc., and before that, under Michael Ophir, M.O. 1, M. O. 2, etc.

Other changes in format will include a reference to the relevant laws and regulations and a statement that the purpose of the circulars are to standardize and publicise practice points.

No reason was given for this break with tradition.  My first suspicion was that Commissioner Assa Kling is A.K. II, however, on checking with Shimon Shalit who provided the names of all the previous commissioners and their deputies, it transpires that this is not the case.

I therefore suspect that this is a veiled criticism of his predecessor Dr Noam exceeding his authority and instituting sweeping substantive changes by circular, that decreeing things best left to the Ministry of Justice or even to the Knesset. By not initializing, the circulars are commissioner independent. I could, however, be wrong. Starting the clock each year could also be indicative that the new Commissioner thinks that it will be necessary to start the tally once a year as he has plans to issue an exorbitant number of rulings over the next eight years. I hope not. No doubt time will tell.

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Posted by Dr Michael Factor

The registerability of an article of manufacture as a 3D trademark revisited

June 14, 2011

Israel Trademark Applications No. 174765 and 174766 relate to telescopic rifle sights, and are attempts to register the appearance of the rifle sights as a trademark. The applicant was Trijicon, represented by my alma mater, Seligsohn, Gabrieli and Co.

background

In Israel, registered designs are protectable for 14 years. Trademarks are protectable indefinitely. Consequently, there are attempts, from time to time to register the shape of an article as a trademark. In addition the being renewable indefinitely, trademarks can be filed for objects already on the market, whereas in Israel, designs require absolute local novelty, unless they are filed within six months of a design registration abroad as a convention filing.

the shape of an object is generally functional and indicative of the good not the manufacturer or supplier of the good. Interestingly, and somewhat analogous to the present application, Japan has allowed the Maglite as a trademark. The Maglite is rather well-known of course…

The applications claimed priority from earlier trademark applications filed in the US. On examination, the marks wer rejected as not being marks indicative of the source of the goods, but as images of the goods themselves; the correct way to protect them being design registrations.

The applicant argued that in accordance with Circular MN 28, three-dimensional marks could be registered if they had acquired distinctiveness and argued that these marks had achieved this requirement. Following a decision by the commissioner of Patents and Trademarks concerning an attempt to register a cardboard cosmetic box with cut-out windows as a trademark , the trademark office reiterated their refusal. However, since this ruling was appealed to the Supreme Court, the applicant requested to stay the proceeding until the Supreme Court ruling.

In May 2008, following 11487/03 Augustus Storck, where the Toffiffee praline was accepted as a trademark by the Supreme Court, the commissioner of patents issued a further Circular refusing to allow the shape of objects to be registered as trademarks.

The applicant then requested allowance under section 16 of the trademark ordinance. Essentially, since the marks had been allowed in the US, they should be allowed in Israel if even a smidgen of distinctiveness had been acquired. This request was followed with a request for a hearing. At the hearing it transpired that the marks were originally refused in the US as well, but were eventually allowed as having acquired distinctiveness.

Under section 16 there is a long list of reasons for refusal of a mark and the applicant argued that this list was exhaustive, and did not cover the present scenario. essentially, that where a mark has been allowed in the country of origin, it should be allowed locally in Israel as well.

The previous Commissioner of Patents, Dr Meir Noam, generally took the position that the availability of registered design protection precluded trademark registration and instructed the Examiners accordingly. Ruling that the marks were descriptive, the outgoing Deputy Commissioner of Trademarks Noach Shalev Shlomovits ruled that the marks could not and had not acquired distinctiveness and should remain available to the public and competitors. The application was rejected.

COMMENT

In this case, it does seem that the design in functional and not indicative of origin of goods. Thus I concur with Shlomovits’ ruling. Nevertheless, I enjoyed the splendid, if pointless rearguard action to register the appearance of the goods as a trademark, which real.

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Posted by Dr Michael Factor

Opposition Withdrawn but Israel Patent Office Refuses Patent Anyway

June 9, 2011

Lilly Icos LLC applied for Israel Patent Number 147642, a national phase of WO/2001/008688) BETA-CARBOLINE DRUG PRODUCTS. The patent application concerns Tadalafil, a treatment for male impotence due to erectile dysfunction which is marketed as Cialis.

After allowance, the patent application published for opposition purposes and Teva filed an opposition claiming that the invention was essentially using smaller particles as a technique for improving the rate of solubility of the drug and was therefore obvious.

Eventually the sides overcame their differences and the opposition was withdrawn. However, using his authority under Section 34 of the Israel Patent Law, Deputy Commissioner Noach Shalev Shlomovits defended the public interest and refused the patent, ruling that the technique of reducing particle size as a means of increasing rate of solubility lacked any inventive step.

As he was terminating his contract, and in accordance with Ordinance 74 and Section 159, the Deputy Commissioner gave the parties 30 days to file any appeals so he would be able to close the file himself rather than having his replacement learn the material. 

COMMENT

Solubility is a surface effect. Since the amount of surface area for a given weight of material increases as particle size decreases, it is clear that shrinking particle size will increase rate of solution.  It seems, therefore, that the Deputy Commissioner is correct.

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Posted by Dr Michael Factor

Service Inventions – Report of a Hearing Behind Closed Doors

June 9, 2011

The Israel Patent Office has published a highly censored report of a hearing concerning Invention No. XXX, filed on 29 November 2004 filed by a Mr Ronen Harel (Hamami). Mr Harel was a bomb disposal expert (sapper) working for the police bomb disposal group and the Israel Police and the State of Israel claim that the invention is a service Invention owned by them as his employer. 

Where an invention is considered of national security, filing abroad is prohibited and the application is kept secret. There is, however, a committee that decides on compensation to the patent owner. The first question, therefore, is who is the owner of the patent? A second issue is whether compensation is due.

The legal question is whether the invention is a Service Invention under Section 132 of the Israel Patent Act 1967. The Commissioner of Patents has the authority under Section 133 of the Patent Law to decide this issue if the parties appeal to him. There is a royalties committee that decides on appropriate compensation for Service Inventions.

In addition to relating to the issue of employer – employee inventions and the ownership of patents developed by State employees, the particular development in question apparently relates to bomb defusing and has security ramifications and so the hearing was carried out behind closed doors and the ruling has the frustrating characteristic of having the juicy bits blacked out. The invention certainly has something to do with explosives but it is unclear exactly what and how it works. 

Thus we learn that in or around 1995 – 1996, the Inventor started working in the XXX facility on development of innovations.

A particularly informative sentence goes like this:

The title of the invention is “XXX”. There is no disagreement that the invention relates to explosives and specifically to “XXX”.

Although the State acknowledges that the Law provides compensation to inventors of State Inventions, the interpretation of the case-law is not overly generous to the inventors and the State also argues that such inventions are generally the result of team effort.

The inventor claimed to have developed the invention on his back veranda in 1996 and that for the first time the innovative development allows XXX (frustrating isn’t it?)

Supported by his immediate superior, the inventor claimed to be the initiator of the development and that after he filed the application himself, the onus was on the State

What is interesting about the case is that the arguments raised are exactly those raised abroad regarding academic inventions. The inventor claims that his job was not to invent, that he developed the invention at home on his balcony, that the onus is on the employer to prove that he was contractually required to transfer all inventions, that he’s developed the idea with his private money, that his job description didn’t include inventing. The State argued that the inventor turning to private contractors was a criminal act, and that policemen and security personnel were defined as such also when off duty. They brought various deputy commissioners and chief inspectors to testify as to the norms in the unit and showed that the field officers were trained in the theory and consulted with regards to developments and were encouraged to innovate.  

The Commissioner of Patents asserted that the officer did take work home and did routine paperwork on his home computer, thereby rendering the fact that the invention was apparently developed at home, not decisive. The various procedures of the unit made it clear that development was part of the job.

The commissioner ruled that the invention was to be considered a service invention and State property. In view of the effectively unlimited resources of the State to fight such actions, he limited the costs awarded to NIS12,000 (about $3500 US). The decision has been referred to the committee that handles royalty and compensation issues.

The decision, was published recently in May, but dated 8 December 2010. I assume that the ruling was referred back to the Ministry of Defence for censorship before publication and this resulted in the 6 month publication delay.

I hope that the invention is implemented and saves lives.

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Posted by Dr Michael Factor

Patent for Hydrated Salt of Risedronate Refused in Israel Opposition

May 4, 2011

Risedronate is used for the treatment of Paget’s disease of bone, a disease in which the formation of bone is abnormal, and for treating sufferers of osteoporosis in which the density and strength of bones are reduced. By slowing down the rate at which bone is dissolved, risedronate increases the amount of bone. The FDA approved risedronate for treatment of Paget’s disease in 1998 and for the prevention and treatment of osteoporosis in 1999. The drug is marketed as Actonel.

Proctor & Gamble filed worldwide patents titled for WO/2001/056983 ”Selective Crystallization of 3-Pyridyl-1-Hydroxyethylidene-1,1-Bisphosphonic Acid Sodium as the Hemipentahydrate or Monohydrate.” This patent has issued in Korea, Europe and the US. After allowance in Israel, it published for Opposition purposes and Unipharm filed an opposition. The claims in Israel were those allowed in the US.

The main claim is:

A process for selectively producing 3-pyridyl-1-hydroxyethlidene-1,1-bisphosphonic acid sodium hemipentahydrate and monohydrate comprising the steps of:

a) providing an aqueous solution of 3-pyridyl-1-hydroxyethlidene-1,1-bisphosphonic acid sodium;

 b) heating the aqueous solution to a temperature from about 45° C. to about 75° C.; c) adding a solvent to the aqueous solution; and

 d) optionally cooling the aqueous solution.

The Opposer claimed that the applicant knew full well that the hydrated salt was a mixture of the hemipentahydrate and the monohydrate and that the method of crystallization was the standard method of dissolution and was totally lacking in inventive step. The Applicant claimed not to have been aware of the monohydrate, although it is apparently always precipitated with the hemipentahydrate.

Deputy Commissioner Noach Shalev Shlomovits who heard the opposition, was apparently impressed by the fact that neither in the application nor during the opposition proceedings, did the applicant produce any crystallographical evidence, but simply deduced the two salts from the weight of the crystals, estimating the water of crystallization. Without any other evidence, it is clear that both crystal forms must have been known, and it appears that the general observation of controlling the rate of cooling and concentrations does not involve an inventive step. Shlomovits ruled that not only was there a lack of inventive step, but that the application was not properly enabled. Furthermore, he states that the claimed invention is not fairly based on the specification. Additionally, for greediness in clearly claiming more than is entitled, the Deputy Commissioner ruled that the application should be rejected. Finally, he stated that the scope of the composition claims include the pure hemipentahydrate which the applicant accepted was previously known since it was claimed in an earlier application.

Comments

The decision is resplendent with words like obvious’ and clearly, yet it should be noted that other, significant examining jurisdictions did allow the patent. Nevertheless, claims 16 to 18 relate to mixtures of from 50%-100% hemipentahydrate which does indeed lack novelty due to previous patents for the salt. Is this an attempt at ever-greening? Perhaps. If the applicant is dissatisfied with the Deputy Commissioner’s analysis, this decision will be appealed to the courts.

It should be noted that Teva tried unsuccessfully to invalidate the main Actonel patent in 2008. Earlier this year Teva was sued by Roche and by Warner Chilcott for patent infringement when trying to obtain FDA approval for a generic version of the drug.

Leave a Comment » | drugs, Intellectual Property, Israel, Israel Patent, Israel Patent Office, Israel Patent Office Rulings, Patents, pharmaceuticals, pharmaceuticals and Biotechnology, Teva | Permalink
Posted by Dr Michael Factor

Conference on Intellectual Property in Jewish Law

April 14, 2011

         

 

Are Delighted to Invite you to Participate in a

Conference on Intellectual Property in Jewish Law

JMB, Factor & Co. and Yad HaRav Herzogare delighted to invite you to a full day Conference on IP in Jewish Law, to be held on Sunday 26, June 2011 (24 Sivan 5771)

at the Yeshurun Center, 44 King George Street, Jerusalem.

TENTATIVE PROGRAM

Words of Welcome

Rabbi Prof. Abraham Sternberg 

My Grandfather Rabbi Yitzchak Issac Herzog’s Legacy

MK Isaac Herzog

The Halachic Basis of Intellectual Property in Jewish Law

Rabbi and Rabbinic Court Judge Zalman Nechemia Goldberg and

Former President of Supreme Rabbinic Court Rabbi Judge Shlomo Dzaichowski

Jurisprudence – IP in Jewish Law

Prof. Yechiel Kaplan, Haifa University

Bans and Approvals for Books – A Rabbinic Approach to Balancing Between Author and Publisher’s Rights and the Common Good

Rabbi Prof. Nahum Rakover, former Deputy Attorney General of the State of Israel and Director Jewish Legal Heritage Center

Halachic Obligation on the Individual to Recognize Secular IP Laws

Rabbi Yisrael Rosen, Director, The Zomet Institute

Historical Development of IP in Jewish Law

Rabbi Prof. Gershon Bacon, Bar-Ilan University 

An Overview of Recent Patent, Trademark and Copyright Issues of Interest to Jewish Law

Adv. Aharon Factor and Dr. Michael Factor, JMB, Factor & Co. 

The Influence of Secular Law on IP in Halacha

Prof. David Nimmer, UCLA

Copyright in Jewish Law from Maimonides to Microsoft

Prof. Neil Netanel, UCLA

Trade Secrets in Jewish Law

Prof. Jeremy Phillips, Center for Intellectual Property, QMW, University of London

COMPARATIVE APPROACH FROM OTHER MONETHEISTIC RELIGIONS

IP in Islamic Law

Prof. Amir Khoury, Tel Aviv University

IP in Christian Law

Dr. Roman Cholij, Trademark Attorney

 To register: seminars@israel-patents.co.il

Leave a Comment » | Academia, Intellectual Property, Israel, Israel IP, Israel Patent, Israel Patent Office, Israel Patent Office Rulings, Israel Related, Israel Trademark, Jewish | Permalink
Posted by Dr Michael Factor

Designs For Rubber Seals?

April 6, 2011

  

Modern Israeli homes and schools are built with sealed rooms. These reinforced rooms with special concrete are designed to provide protection from rockets and from chemical and biological warfare.

Termo-Gumi LTD. (Thermo Seal) have a registered design (no. 310007) for a window seal for the regulation window of a sealed room. The seal was registered in class 25(1) as a rubber seal for an aluminium profile. A cross-section of their window seal is shown above. 

Agmon, the Company for the Manufacture of Rubber and Plastics LTD initiated an annulment proceedings challenging the validity of the registration on the grounds that the seal had been prior exhibited, with a supplementary argument that the seals being manufactured were slightly different from the seal as registered. They also argued that since the seal was sold cut to size, and the registration only showed a section, as would be suitable for continuous extrusions, the registration was invalid as not indicating the appearance of the seal.

Shalev Shmulovich argued that the design as registered was slightly different from those previously available, and reproduced images from the catalogues and from previous registrations. He also ruled that the slightly different profiles of the seals actually being manufactured with regards to the shape of the aperture and of the tongue were both the results of tolerances when extruding rubber. He ruled that the customer was the building contractor and not the home purchaser, and considered the design to be sufficiently novel and original to be registerable.

The annulment proceeding was dismissed and costs of NIS 30,000 were awarded to Termo Gumi.

The case: Annulment Proceedings Concerning Registered Design Number 31007 to Termo Gumi LTD, brought by Agmon Company for Manufacture of Rubber and Plastics LTD, before Noach Shalev Shmulovich, 4 April 2011.

COMMENTS

The Deputy Commissioner, Noach Shalev Shmulovich relied heavily on Russell-Clarke & Howe on Industrial Designs, a leading text in the field. He also quoted heavily from US design rulings. He ruled that the amount of novelty required for design registration was slight and so is the work around. The judge is supposed to put himself in the position of the customer and compare the design with others on the market.

This is all well and good. The problem is that rubber window seals for sealed rooms are purely functional and, when window is closed, are not seen. The only justification given in the ruling for allowing a design registration for this type of thing is that if the current design is not registerable than nor is the previous design. I submit that this may indeed be the case!

There is insufficient Israel case-law on the design registerability of purely functional objects. In the US, at least, a design patent for such an object would not have the novelty and aesthetic non-obviousness to stand up in court. Consequently, the citations from US case-law are at best, irrelevant.

There is another problem. the component is not merely functional, but is also essentially a replacement part.

I think seals for such purposes may need to conform to various standards and could be packaged with a manufacturers name or on a roll with the manufacturers name on it, but am not convinced that the correct balance between competition law and the conflicting interests of the manufacturer, competitors and the public is to require the competitor to design around components of this nature.

Leave a Comment » | design, israel design ruling, Israel IP, Israel Patent Office, Israel Patent Office Rulings | Permalink
Posted by Dr Michael Factor

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