The Duty of Disclosure in Israel

February 6, 2012

In Commissioner Circular No. 011/2012, the Commissioner of Patents, Adv. Assa Kling has clarified the Duty of Disclosure under section 18 of the Israel Patent Law.

Prior art cited against corresponding applications abroad as novelty or inventive step destroying (for example X and Y citations in PCT applications, and citations cited under Sections 102 and 103 in the US) should be provided on a CD or other appropriate digital media. Only these citations should be provided on the CD which should be clearly labeled as appertaining to the specific application and, if more than one disk is submitted, these should be labeled 1 or x, 2 of x, etc.

COMMENT

Although the commissioner does not ask for it, and perhaps does not want it at all, I would nevertheless advise clients to submit a list of other references believed relevant, such as those cited in another related application that does not share a common priority, art referenced in the background cited in an Information Disclosure Statement (IDS) in the US, etc., since I can see failure to do so could be considered as bad faith by the courts, and in Israel Law, bad faith is considered very seriously indeed.

In this point, I am aware that I am at odds with my former colleague, Mr Shimon Shalit, whom is an authority in such matters.  I would therefore be interested to hear from other practitioners with views or strong feelings one way or the other.

Footnote

I suspect that Merpel, the IP Kat’s friend, would make some Katty remark about the CD being a circular in a circular.

The tee-shirt was chosen for Kim Lindy who liked the one I found for oral exams  (see here).

Leave a Comment » | Israel, Israel Patent Agency, Israel Patent Office | Permalink
Posted by Dr Michael Factor

Slogans to be treated like any other trademark applications

January 17, 2012

The Tel Aviv District Court has upheld a decision by the Israel Patent Office  to refuse Eveready’s Trademark Application Number TM 204, 832 for shaving creams and 204,499 for razors and shavers  for the slogan “Free your skin”.

However, the court has over-turned the assumption that slogans are always descriptive or laudatory and therefore invariably non-registerable, ruling that they should be examined like any other mark. Consequently, the current Commissioner or Patents and Trademarks Adv. Assa Kling has cancelled Patent Office Circular MN 29 that held that slogans cannot be registered.

BACKGROUND

On August 28, 2010, then Deputy Commissioner Noah Shalev Shmulovits upheld a decision of the trademark examiner, that Israel Trademark Number    was invalid for registration.

Shmulovits based his decision on Israel Patent Office Circular Number M.N. 29 in which then Commissioner of Patents and Trademarks Dr Meir Noam ruled that slogans could generally not be registered.

Since then, there have been a number of exceptions. See  for example party-like-a-rockstar,  im-lovin-it, shufersal, its-all-for-you, bleach-free and diamond in your pocket  for specific rulings.

Eveready appealed the decision to the courts. In a well-reasoned ruling, Judge Yitzhak Anber has ruled that slogans may often be laudatory or descriptive, but should be considered as simply multi-word marks and judged on their merits.

21488-05/11 Eveready vs. Commissioner of Patents and Trademarks, Tel Aviv District Court  by Judge Yitzhak Anber, 8 December 2011.

Leave a Comment » | Israel, Israel Court Ruling, Israel IP, Israel Patent Agency, Israel Patent Office, Israel Patent Office Rulings, Israel Related, trademarks | Permalink
Posted by Dr Michael Factor

Israel Patent Law Ammended

December 14, 2011

On 8th December 2011, the Israel Knesset passed an amendment to the Israel Patent Law 1967.

There appear to be two changes, the first cosmetic and the second substantive.

Firstly, all references to the Israel Patent Office “משרד הפטנטים” or uses of the word “לישכה” meaning ‘office’ are amended to “רשות הפטנטים”  and “רשות” , i.e. Patent Agency and Agency.

More substantively, there is an amendment to reflect that the Israel Patent Office, whoops, Agency will henceforth provide PCT style International Search Report compliant search reports (ISRs) and will also be able to provide International Search Reports for applications received by the Israel Receiving Office of the PCT, where one or more inventor or applicant is an Israeli Citizen or corporation, and also for citizens or corporations of other countries having a relationship and appearing in an appropriate appendix to the Law, to be updated from time to time.

COMMENT

The Israel Patent Office (it’s OK, I can still use the old name until 8 January 2012 when the amendment comes into force) has been styling itself Israel Patent Agency for a while now, but this is now enshrined in the Law. There don’t seem to be punishments for people who forget, but I will do my best to comply.

Regarding the Searches, there are a few questions that require clarifying and no doubt the Commissioner of Patents will issue a Circular in due course:

  1. Can Israel applicants still elect the USPTO or EPO to search their applications as they can at present?
  2. What happens if applications are filed at the International Receiving Office in Geneva? – at present, this does not affect the authorized International Search Authorities, but maybe this will change.
  3. How much will an Israel PCT search cost?
  4. When will this come into effect – not the amendment to the Law, but that Israel will provide ISRs?
  5. Now that the Israel Patent Agency  is to provide ISR type searches, does that mean that at last they will start searching and examining all claims, at least for the first invention as defined by PCT Law and Regulations, and not just the independent claims as they generally do at present.

Time, and Patent Office Circulars, will no doubt tell.

Leave a Comment » | International Search Report, ISR, Israel, Israel Patent Agency, Israel Patent Office, patent search, Patents, PCT, WIPO | Permalink
Posted by Dr Michael Factor

Missing the bus

December 8, 2011

Omnibus claims laconically claim the invention as described in the specification and/or illustrated in the figures of a patent application, instead of reciting strctural detail or listing method steps.

Back in 2008, the then Israel Commissioner of Patents, Dr Meir Noam, banned independent omnibus claims as being unclear, see here. That was some five years after Dr Noam assumed office. He failed to  explain why their clarity had suddenly changed for the worst, or why he’d suddenly noticed.

The present Commissioner of Patents, Mr Assa Kling, has now issued a circular ruling (Circular 008/011) due to the inherent lack of clarity, omnibus claims will henceforth not be allowed, whether submitted in dependent or independent form.

COMMENT

He is, of course correct, but then again, they are no more unclear now than they were previously. We hope that this indicates that henceforth, dependent claims are going to be examined on their merits. We also wonder if there is any scope for Israel courts to enforce the “pith and marrow” of a patent, regardless of claim deficiencies.

Leave a Comment » | IPO, Israel, Israel IP, Israel Patent, Israel Patent Office, Patents, Uncategorized | Permalink
Posted by Dr Michael Factor

Next Sittings for Israel Patent Attorney Qualification Examinations

December 7, 2011

A week ago, the Israel Patent Office informed us that henceforth dates of examinations would ONLY be published on the Official website. See here

As I pointed out at the time, since there is a limited number of qualified mentors and a limited number of candidates who have all registered as trainees and so are known to the Israel Patent Office, the work involved in informing potential examination candidates is minimal. Furthermore, the little community of IP practitioners in Israel generally subscribe to the contact list of the Israel Patent Office and so simply informing the contact list would be fairly trivial, and, I suspect easier than updating the website.

I am not sure which personnel at the Israel Patent Office follow my blog, but it would be nice to think that my comments were heeded. That as may be, we are delighted to inform readers that the Israel Patent Office has recanted and have notified the mailing list.

the details are also available on the website and can be found  here

For those candidates who have problems with Hebrew legalese, in summary:

The oral exam will take place on Sunday 26 February 2012 and on Tuesday 28 February 2012, and candidates should keep both days free.

The written exam will take place in 19 February 2012 for those candidates wishing to display their skills at drafting chemistry or life science type applications. The exam that tests ability to draft mechanical, electronic and computer science type applications  will take place on Tuesday 21 February 2012.

Candidates should register a month earlier, i.e. by 19 January 2012 using this form

There is a minor mistake regarding the fee to be paid. Never mind. Several questions remain open. for example, some practitioners, such as myself, draft in both the predictable and unpredictable arts. Can such candidates sit both written papers? Can they register to both, look at the paper on the 19th and decide not to attempt it, but to come back two days later?

We also wait with bated breath to see if the examination committee for the oral exams will include ‘not more than one patent attorney’ as required by Law.

 

Leave a Comment » | Israel IP, Israel Patent Office, Patents | Permalink
Posted by Dr Michael Factor

Is the Israel Patent Office ready to become an International Search Authority for PCT applications?

December 5, 2011

Back in 2010, WIPO voted to allow the Israel Patent Office to become an International search Authority. Since then, the Israel Patent Office has provided International Search Report (ISR) style searches for new applications first filed in Israel where applicant declares an interest in filing abroad.

Additionally, regular examinations are now provided in IPEA style.

In 2012, WIPO and the Israel Patent Office was decide if the IPO is ready to become an ISA. Depending on the cost and quality of a Blue & White search, patent attorneys in eligible jurisdictions (just Israel? Israel and Micronesia? elsewhere?) will advise applicants accordingly. Is the Israel Patent Office ready?

Leave a Comment » | Israel, Israel Patent, Israel Patent Office, Patents, PCT | Permalink
Posted by Dr Michael Factor

Israel Patent Attorney Qualifying Exams

November 29, 2011

The Israel Patent Office has informed that henceforth, details of examination dates for candidate patent attorneys will only be published on the Official Patent Office website.

COMMENT

From a quick look at the register, I note that there are only about 173 licensed practitioners that have the three years’ post licensing experience to mentor trainees. Since the previous commissioner, Dr Meir Noam, required registration of trainees, the Israel Patent Office has contact details of potential candidates. The Israel Patent Office also has a mailing list that one can subscribe  to.

In consequence of the above three facts, it seems fairly trivial for the Israel Patent Office to effectively actively inform all mentors, candidates and their mailing list of exam sittings. It seems a pity to think that someone might miss a sitting through not avidly monitoring the website, whose links often don’t work properly, and whose layout keeps changing.

Although according to regulations, the Exams should take place three times a year, in practice, they occur just under twice a year.  There is frequently insufficient notice. This development favors the bigger firms with many trainees, who can more easily see what’s happening. It discriminates against the hardy perennials who keep failing and may not be monitoring the patent office website.

Being a good Samaritan, literally – living as I do in Samaria – I will endeavor to keep my readers informed!

Leave a Comment » | Academia, Israel, Israel Patent Office, Patents | Permalink
Posted by Dr Michael Factor

Judy Dvora Simchi of the Trademark Department of the Israel Patent Office Passes Away

November 28, 2011

The Israel Patent Office has notified the profession that Yehudit (Judy) of th trademark department has passed away. The funeral was on Sunday in Jerusalem, and the family will be observing the seven-day mourning period in the family home in Maale Adumim.

Leave a Comment » | Israel IP, Israel Patent Office, Israel Patent Office Rulings, Israel Trademark, trademarks | Permalink
Posted by Dr Michael Factor

What is required to obtain actual and not estimated costs in a Patent Opposition?

November 20, 2011

Oval Magofim LTD, represented by Mati Barzam, successfully opposed Israel patent application No. 165760 to Alberto Lodolo.

After requesting and receiving one extension to file a response and counter-claims, the applicant filed for a second extension and was refused, and the application was thus dismissed.

The opposer filed for costs, and claimed NIS 50,000, arguing that the legal costs incurred were NIS 35,763.60, to which should be added a further NIS 15,000 for direct costs to the opposer who had to use their own staff to prepare evidence for the Statement of Case.

The lawyer’s invoices were appended to the request for costs, as was an affidavit from the CEO of the opposer who claimed that he or another worker had spent 100 hours in getting material together and in reviewing the opposition statement.

In ruling, Ms Y. Shoshani Caspi considered lawyer’s invoices labeled ‘for patent work’ insufficiently detailed to be clearly linked to this specific case and to explain how the sums reached were justified. Furthermore, the affidavit was also considered insufficiently detailed. One specific point Ms Y. Shoshani Caspi queried was that the CEO detailed reviewing the statement of case. Ms Y. Shoshani Caspi considered this as an additional safeguard but not strictly neccessary. She rejected the actual costs and estimated that NIS 15,000 were appropriate for the amount of work performed.

Costs in opposition to IL 165760 to Alberto Lodolo, opposed by Oval Magofim LTD., 19 September 2011.

COMMENT

Without seeing how much material was filed, it is difficult to estimate how much work went into it, but at a reasonable  IP lawyer’s rate of NIS 1000 an hour, one can assume that the cost of filing an opposition, which requires analyzing the application, reviewing prior art and writing an opposition will take time.

I suspect that the patent office simply weighs the material submitted, and am not sure that the estimated costs are fairer than the requested costs.  That said, the patent office is in the best position to directly compare different cases.

 

Leave a Comment » | Intellectual Property, Israel, Israel IP, Israel Patent, Israel Patent Office, Israel Patent Office Rulings, opposition | Permalink
Posted by Dr Michael Factor

How many lawyers does it take to cross examine a witness?

November 20, 2011

This isn’t a joke. Rafa Laboratories LTD. opposed patent number 129724 to Takeda Chemical Industries.

The then Deputy Commissioner allowed the applicant to cross-examine someone in Slovenia at the opposer’s expense.

The applicant, represented by S. T. Colb, presented the opposer with an itemized bill for NIS 76,449.70, for first class flights for two attorneys from Israel, Takeda’s Head of IP from the UK, and a further representative from Japan. In addition to the four first class tickets, the applicant incurred three night’s stay in Ljubljana and hired the services of a local lawyer.

The opposer thought that three representatives was quite adequate, and that they could fly tourist class. They considered both the Japanese representative and the local lawyer to be unnecessary, also the first night in Ljubljana, which was a full day before the evidence taking, to be excessive. They redid the maths assuming that business class travel was twice as expensive as tourist class, and paid NIS 25,398.41.

In response, Colb argued that the lawyers always travels first class and the first day was required to hold a meeting between the various lawyers, and doing this in Ljubljana was the cheapest option.

The present decision examines the claims of both sides and rules on what are reasonable costs.

The Decision

Ms Yaara Caspi Shoshani considers it the prerogative of the applicant to decide how many lawyers to send and whether the best person is to come from Japan or elsewhere, so found four representatives acceptable. Furthermore, she had no problem with the applicant engaging a local attorney as the examination had to be performed in accordance with local civil procedure. However, regardless of whether the attorneys in question generally travel business or tourist class, she did not see why the opposer should pay for the luxury of business class. As to the first night in the hotel, she accepted that meeting in Ljubljana was cost-effective for the applicant but did not see why the opposer should pay for the expenses incurred by the applicant in preliminary meetings.

She halved the fee asked for on behalf of the Japanese representative, added a taxi fare and a night in Paris for him (no direct flights), converted everything into New Israel Shekels at the exchange rate at the time of the hearing and came to the conclusion that a further NIS 29,935.35 was in order.

The main case-law she based her reasoning on, was Bagatz 891/05 Tnuva vs. Israel Department of trade and Industry,  P. D.  S(1) 600.

The Ruling: Costs re Takeda Chemical Industries vs. Rafa Laboratories Concerning Israel Patent No. 129724, 20 September 2011.

Comments

IL 129724 relates to crystaline structures of Indazole.

I would recomend any attorney having reason to go to Ljubliana to visit Bled. It’s stunningly beautiful and seems a pefect backdrop for a business picnic. I can understand why Rafa feel bled by this, but quite frankly the sums of money to be made if a commercially significant pharmaceutical patent is successfully opposed are very significant.

Unfortunately, when I went with wife and kids for a week’s self catering holiday in Slovenia, we went tourist class and I couldn’t write it off as a business expense. Still it’s nice to know that one day I may need to go there on IP related business.

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

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