Circular 19/2012 Updated to Reflect On-line filing, but what about the Abstract?

January 28, 2016

abstract painting

Now that the Israel Patent Office is set up for and accepts on-line national phase entry of patent applications, Applicants can either file on paper or directly on line. The relevant Circular 19/2012 has been updated accordingly.

One can upload the Specification, Figures, Claims and genetic sequence if relevant using fields in the on-line interface.

COMMENT
My second attempt at filing on line went like a dream. I do, however, have one little problem: what about the Abstract?

In the old days, Applications in Israel did not have Abstracts and the Examiner, on allowing the application would write an abstract to accompany a representative image in the patent office journal where the allowance was published for opposition purposes.

More recently, the Applicant (or his representative) was requested to prepare an abstract, which was typically not a problem as the abstract from the PCT or priority document was used.

Now abstracts are sometimes like abstract works of art. One can read anything into them, and the author’s intention and the litigator’s understanding may both be equally legitimate which is one reason that statements made in the Abstract are rarely given much weight.

The problem I have is that the interface does not have a tab for uploading the Abstract and the updated Circular does not refer to this either.

One could submit the abstract as the last page of the description or appended to the claims. Not knowing what to do, I used the genetic sequence if relevant tab to upload a file labeled Abstract and assumed that someone in the patent office would realize that the attachment was not a genetic sequence but an abstract and deal with it accordingly. I thought that fairly quickly the Israel Patent Office would add a further field for uploading the Abstract as the PCT Easy software has one. Now I am not sure. Maybe the Examiner is going to write one as in the old days? Maybe with greater classification and full text searches the abstract has been deemed unnecessary? Does anyone know? Does anyone except me care?


M.N. 81 Canceled

January 27, 2016

division

We were not surprised that following the Genentech decision, The Commissioner circular M.N.  81 was canceled and later circulars that referred to it were amended.

This means that anyone (not just Genentech) can file a divisional from what is itself a divisional patent application in Israel.

We expected this to happen as one has to have common ground rules for all applicants.

There is, however, a downside to this. In cases that have a tendency to go litigious, such as with pharmaceuticals, there is an incentive on the applicant to keep a divisional application alive long after the parent application issues, so that the claims thereof can be amended following litigation on corresponding patents abroad, and judicial rulings concerning wording, claim structure and the like. This makes attacking such patents difficult as they become a moving target.

On grounds of ultra vires, I was unhappy with M.N. 81, but I do feel that on substantive grounds there is room to amend the law. I just feel that it requires the Knesset to do so. Possibly claims in the parent that were canceled due to plurality of invention objections should be allowed to be reintroduced, but I am not sure that allowing anything arguably based on the specification to be reintroduced at any time by keeping a divisional application alive is necessarily a good policy.

Note, there is a dirty word in Israeli legal circles for people with views like me. I am dismissed by the crusader crowd as being a ‘formalist’. I am aware of the arguments that we need judicial fiddling to protect democracy. However, I see them as Orwellian, and inherently dangerous.


IPad Mini, IPad Air and MI Pad

January 20, 2016

Apple Inc filed Israel Trademark Application Number 261500 for IPAD MINI and Israel Trademark Application Number 261449 for IPAD AIR on 12 November and 20 November 2013. both in class 9 for Handheld mobile digital electronic device comprising a tablet computer, electronic book and periodical reader, digital audio and video player, camera, electronic personal organizer, personal digital assistant, electronic calendar, and mapping and global positioning system (GPS) device, and capable of providing access to the Internet and sending, receiving, and storing messages and other data.

Subsequently, on 14 May 2015, Xiaomi Singapore Pte. Ltd filed Israel Trademark Application Number 270078 for Mi Pad. The mark covers Portable and handheld electronic devices for transmitting, storing, manipulating, recording, and reviewing text, images, audio, video and data, including via global computer networks, wireless networks, and electronic communications networks; tablet computers, electronic book readers, periodical readers, digital audio and video players, digital camera, electronic personal organizers, personal digital assistants, electronic calendars, mapping and global positioning system (GPS) devices; computer peripheral devices; computer and portable and handheld electronic device accessories, namely, monitors, displays, keyboards, mouse, wires, cables, modems, disk drives, adapters, adapter cards, cable connectors, plug-in connectors, electrical power connectors, docking stations, charging stations, drivers, battery chargers, battery packs, memory cards and memory card readers, headphones and earphones, speakers, microphones, and headsets, cases, covers, and stands for portable and handheld electronic devices and computers; computer software for the development of content and service delivery across global computer networks, wireless networks, and electronic communications networks; downloadable audio works, visual works, audiovisual works and electronic publications featuring books, magazines, newspapers, periodicals, newsletters, journals and manuals on a variety of topics; computer software for transmitting, sharing, receiving, downloading, displaying, transferring, formatting, and converting content, text, visual works, audio works, audiovisual works, literary works, data, files, documents and electronic works via portable electronic devices and computers; computer game programs; downloadable music files; downloadable image files; video telephones; navigational instruments; screens [photoengraving] in class 9 and Telecommunication access services; communication by computer; transmission of data and of information by electronic means, broadcasting or transmission of radio and television programs; provision of telecommunications connections to computer databases and the Internet; electronic transmission of streamed and downloadable audio and video files via computer and other communications networks; web casting services; delivery of messages by electronic transmission; streaming of video content, streaming and subscription audio broadcasting of spoken word, music, concerts, and radio programs, broadcasting prerecorded videos featuring music and entertainment, television programs, motion pictures, news, sports, games, cultural events, and entertainment-related programs of all kinds, via computer and other communications networks; providing on-line bulletin boards for the transmission of messages among computer users concerning entertainment in the nature of music, concerts, videos, radio, television, film, news, sports, games and cultural events; communication services, namely, providing users access to communication networks for the transfer of music, video and audio recordings; teleconferencing services; providing Internet chatrooms; voice mail services; transmission of digital files.  in class 9.

Since Apple Inc.’s marks have not yet issued, a competing marks procedure was instituted and both parties are invited to a hearing before Ms Jacqueline Bracha on 1 February 2016 to states their cases.


Dynavisk

January 20, 2016

Fzio Med Inc.  filed Israel Trademark Application No. 258762 for “Dynavisk”.

After it published as allowed, Genzyme Corporation opposed the mark on 7 October 2015. The period for responding has passed and the Applicants did not respond. They are therefore considered as having abandoned their mark and in view of the material in Genzyme’s statement of case, costs of 2500 Shekels are awarded to them.


IL 214003 to Moshe Binyamin Remains Closed

January 17, 2016

Diy brain surgery.jpg      magic bracelet

In December we reported that a private inventor, Moshe Binyamin had filed a request for his closed patent application be reopened. The case was considered abandoned when the inventor failed to respond to the Notice Prior to Examination.

The inventor represented himself. Generously, the Deputy Commissioner Ms Jacqueline Bracha gave the applicant seven days to file a detailed Affidavit as to why the case was abandoned. Since the case had published and over a year had passed since it was abandoned and the applicant failed to provide an adequate explanation for the case going abandoned and did not attend a hearing, The case remains closed.

COMMENT
It seems that Ms Bracha was more than generous towards this inventor. Representing oneself in legal matters is not usually a good idea.

The invention is for some sort of bracelet with magical health powers. This is a very good idea. As the revival of the application was rejected it remains in the public domain. Unfortunately it doesn’t seem to be fully enabled and I doubt its efficacy.


Trademark Challenger Can submit Documents in Arabic to Israel Patent Office

January 17, 2016

Vc VITAMIN DEFENCE CREAM

Israel Trademark Number 239657 to A & M Malchem Import and Export Electrical Products LTD registered the mark shown above for Sunscreen preparations containing vitamin C; included in class 3.

Almanara for Marketing Inc filed a cancellation request on 8 May 2014.

The mark owner (A & M Malchem) filed their statement of case on 6 November 2014, and on 30 July 2015, Almanara for Marketing Inc. filed a pair of affidavits. Under regulations 39 and 71, the mark owner had until 30 September 2015 to respond.

The deadline passed but on 9 October 2015 the mark owner requested an extension, and since the challenger consented, the mark owner was given a retroactive extension until 30 October 2015. However, the mark owner failed to meet this deadline and on 10 November 2015, some 10 days later, the mark owner requested that either the challenger or the Patent and Trademark Office withdraw evidence from the file. That’s not all. Fifteen days later on 15 November 2015, instead of submitting their evidence, the mark owner requested that the challenger’s affidavit be struck from the record. On neither occasion did the mark owner request an extension. It was only later that the mark owner again requested a retroactive extension for submitting theןr evidence.

As to the various requests, the Patent & Trademark Office refused to order the opponent to translate their affidavits from Arabic to Hebrew since Arabic is an official language in  Israel, and to the extent that the patent office or the Ministry of Justice requires translations it has to pay for them itself. Regarding pictures of foreign certificates and formal problems with the affidavits as not dated or including the warning from an attorney to tell the truth, the Adjudicator of IP considered the mark owner was correct, but that striking the evidence was less appropriate than awarding costs to the mark owner.

The mark owner and the challenger were each given 30 days to submit their corrected evidence.  Since the Arabic evidence would require translation, a digital copy was requested and the challenger was ordered to pay 500 Shekels costs including VAT.

 

 

 

 


Inventor Compensation Under Section 134 of the Patent Law

January 13, 2016

compensation       employment-agreement (1)

Section 134 of the Israel Patent Law allows for a committee including the Commissioner of Patents, a judge and one other to decide whether an employee is entitled to compensation for a service invention, and how much this should be.

In Barzani vs. Iscar, the Supreme Court through out Barzani’s appeal of the committee ruling and denied his request for compensation.

The Israel Supreme Court (Appeal 3564/12 Dr Nimrod Bayer vs Florality LTD) overturned a District Court decision that upheld a waiver signed by Dr Bayer and Dr Nimrod Bayer requested that the committee decide on appropriate compensation. The committee chaired by Judge Professor Itzhak Engelard and including the Commissioner of Patents Asa Kling and Professor Shmuel Peleg. issued a ruling on 24 December 2015.

It seems that in this instance, the parties came to an agreement. Consequently the request for compensation submitted to the committee was refused. The ruling clarifies that this decision does not affect Dr Beyer’s moral rights to be considered the technological driver of the company or affect third party rights. It puts an end to the issue and no costs are awarded but the decision is published with the names of the parties at their request.

COMMENT

We suspect that the anonymous suspension procedure we reported in 2014 related to this case. Not much can be learned from this ruling except that the committee does meet. At least occasionally.


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