An overview of the Annual General Meeting of the Israel Patent Attorneys Association

March 3, 2015

zoa

Yesterday I attended the Annual General Meeting of the Israel Patent Attorneys Association. The event, as ever, was held in Zionist House of America, in Tel Aviv.

The attendance was relatively high for this type of event, with maybe 80 – 100 participants at the beginning. However, many left after the lectures and before the General Meeting.

Before the AGM part of the proceedings, there were two speakers: the Deputy Legal Advisor to the Government on civil issues, Adv. Erez Kaminitz and the Commissioner, Asa Kling.

 

kaminitz

Adv. Erez Kaminitz spoke on “Legislation, How an Idea Becomes a Statute”. Kaminitz used the metaphor of drafting a patent application and the prosecution process to illustrate the legislative process. This was an interesting analogy that didn’t quite work. What was clear was that although he obviously knew his subject and was qualified to speak on it, he didn’t understand much about patent drafting or prosecution. There was nothing new to anyone with a law degree or an interest in politics. I am not sure to what extent the material is covered in High School Civics as I didn’t study in High School in Israel, but I suspect amongst the patent attorneys present there were few who found the explanation enlightening. It seemed as though Kaminitz felt that the audience needed something that they could latch on to so that they could follow the legislative process. This is not the case. As a group, patent attorneys are highly educated and used to being exposed to new ideas. I found the analogy patronizing and unnecessary.

It seems that the elections are holding up legislation  I had intended to cast my vote on the burning IP issues, but it seems that none of the parties running for the Knesset have IP policy in their manifestos and patents, trademarks and design legislation is simply not high on the agenda of any of the political parties.

asa-kling

 

The commissioner Asa Kling spoke about transparency and partnership, and gave a sneak preview of the Israel filing and prosecution statistics for patents, designs and trademarks for 2014. The absolute numbers of new applications are very close to those for last year, which hopefully indicates that the downwards trend of recent years has flattened out.

We discovered the low level of feedback that the patent office receives when it asks for public opinion. It does appear that feedback is earnestly solicited, and I really should try to formally respond more often, and not just blog my musings.

Adv. Kling showed us various guides and other material on the website and chided us for not visiting or referring clients. He explained that attempts to provide real time information were hampered by protection mechanisms in place to prevent cyber attacks. Nevertheless, he was proud of the examiner guidelines and other material available for review and felt that the level of transparency was higher than for other government bodies.

transparency

Like many of my colleagues, I have advised clients to submit their PCT applications for International Searches (ISRs) with the Israel Patent Office, mostly because it is cheap. I have been pleasantly surprised with the results and, where the results have been favorable, clients have generally been happy. What I don’t know is whether the Israel Patent Office has done an objectively good job, or whether the EPO will find additional art that the Israel Patent Office has missed. I’ve filed national phases for cases that have ISRs from the Israel Patent Office, and am waiting to see what foreign patent offices uncover. It was fascinating to learn that the Commissioner and presumably the examiners at the Israel Patent Office are also eagerly awaiting European Supplementary Search Reports and Examination of corresponding family members to PCT applications that the Israel Patent Office has processed as an International Search and Examination Office. In other words, they have similar considerations.

I discovered that to date, the Israel Patent Office has searched about 30 PCT applications for the USPTO and, although authorized to provide a similar service to the Georgian patent office, do date, have yet to do so. 30 applications originating in the US is a number that I can relate to, as is nothing whatsoever from Georgia. It was interesting seeing the similarities and differences between our respective practices.

facebook

We discovered that the Israel Patent Office has a Facebook account which we were invited to visit and to ‘like’. It reminded me that some years ago, the EPO invited me to exchange links with them.

The committee was friendly and seemed to be actually thanking the members for coming. This was refreshing. The actual AGM business wasn’t very interesting.

We discovered that no progress had been made on setting up a website. Veteran Patent Attorney Daniel Freimann made the eminently reasonable suggestion for the organization to set up a mediation service for settling disputes between members. The idea was unfortunately ignored.

vote

All resolutions passed unanimously or at least overwhelmingly. There was only one position (that of a member of the overseer committee) which was contested. Here after some reminding, Einav Zilber, the Secretary of the IPAA, requested that those who were only trainees or otherwise not entitled to vote refrain from so doing, as should those who had submitted a proxy vote. Not overly surprisingly the candidate who won did not see the need to actually attend the meeting, and had enough proxy votes to outvote those present. One of my colleagues asked me why he’d bothered to stay for the voting, and I had no satisfactory answer for him. Perhaps one day proxy voting will be anonymous in sealed envelopes and not merely block voting by larger firms.  If this happens, I suspect that more licensed Israel patent attorneys will join the organization and take part in the proceedings.

In an attempt to provide services for patent attorneys, it transpired that the committee had made some inquiries into negotiating personal insurance plans for members. Whereas professional malpractice insurance is something that is expensive and one can see the point of the organization negotiating block rates, I don’t think that patent attorneys need to negotiate as a group for personal insurance or pension plans. Such initiatives make sense for professions characterized by large numbers of practitioners and low salaries, such as the teaching profession, nursing and social work. Patent Attorneys are a small group of high earners that are regularly solicited by insurance brokers.

refreshments

The refreshments were more than adequate comprising bread rolls with savory fillings, fruit platters, miniature muffins and biscuits, soft drinks, tea and coffee. The meeting was a good opportunity to meet ones colleagues and competitors.

Generally a successful event and Israel Patent Attorneys are invited to join.


February 11, 2015
Not that kind of niagara!

Not that kind of niagara!

Israel Patent 202468 to Sassy and Dalia Kazir issued on 1 March 2012 for a “toilet water supply system and method therefor”. The patentee paid the renewal fee in a timely manner but did not send proof of payment to the patent office and the patent lapsed.

Mr Katzir submitted an affidavit to the effect that within a week of receiving notification that the patent was not in effect, they requested reinstatement.

In the circumstances, the Deputy Commissioner ruled that the Section 60 requirements that the applicant did not intend the application to lapse and acted in a timely manner to reinstate were fulfilled and a ruling to reinstate will publish for opposition purposes.

COMMENT

It is, of course, ludicrous that one can pay renewals on-line at the Israel Patent Office, filling in the patent number, and then one has to print out the payment slip and send to the patent office so that it arrives there in a timely manner. This requirement results in regular rulings and wastes everyone’s time.


A Request for a Patent Term Extension for IL 117459 “DNA ENCODING HUMAN PAPILLOMAVIRUS TYPE 18″ to Merck

February 10, 2015

gardasil

IL 117459 “DNA ENCODING HUMAN PAPILLOMAVIRUS TYPE 18″ to Merck Sharp & Dohme Corp. was filed on 13 March 1996, and is due to expire on 13 March 2016.

Back in August 2007 a Request for Patent Term Extension was filed based on the commercially available preparation Gardasil. The pharmaceutical preparation contains four active ingredients: Protein L1, types 6, 11, 16 and 18.

The patent claims the Protein L1 type 18 as a product of genetic engineering. The patent relates to the other types of Protein L1 except for HPV 6 L1 for which no patent applications were submitted anywhere. The protein HPV 16 L1 was not claimed in any patent application filed in Israel. HPV 11 L1 was claimed in IL 117591 and expires on 21 March 2016. However, no applications for patent term extensions were filed for this protein.

The legal question that this decision addresses is whether a patent term extension can be requested for a patent that protects only one active ingredient of a pharmaceutical preparation.

The claims of IL 117459 cover a gene sequence of Protein L1 type 18, a vector including the gene sequence, a cell embodying the vector a process of expressing the gene sequence and a preparation that causes a vaccination to the protein including the gene sequence.

The senior examiner considers that Gardasil includes four proteins and any changes in any of them or preparations of three or less will result in a different medicament. Consequently, she considered that there is an inconsistency between the medicine and the claimed invention, in that not all the active ingredients of the claimed invention are in the basic patent.

The Applicant countered that claim 12 of IL 117459  covers a composition that includes (inter alia) HPV 18 L1 and thus the patent does not limit itself to this substance. Consequently, Applicant claims that IL 117459 is a basic patent as defined in Section 64a of the Israel Patent Law 1967 and as referenced in Section 64d. The Law does not require that a basic patent should include all active ingredients of a commercial product, and only one such active ingredient need be listed. Support for this interpretation was argued based on the wording of 64h(d) which relates to an active ingredient included in a preparation and claimed in the basic patent

The Applicant alleged that interpretations that a basic patent should include all active ingredients of the commercially available preparation is contrary to the underlying logic of the legislation and it is unreasonable to include such a limitation by judicial interpretation.

The senior examiner rejected these arguments and the Applicant requested an oral hearing which was held on 28 October 2014 and the Applicant was granted until 10 December 2014 to submit a summary of his arguments.

Section 64d states:

The Commissioner should not grant a patent term extension unless all the following apply:

  • the composition, process for its preparation and usage thereof, medical preparation including the composition, its process for preparation and medical equipment are claimed in a basic latent that is in force.

Section 64a defines the terms ‘composition, ‘medical preparation’ and ‘basic patent’ as follows:

  • Medical preparation – any form of medical drug that has been processed, including preparations for veterinarian applications and those having nutritional value that are injected intravenously.
  • Composition – the active ingredient or salts, esters, hydrates or crystals of the composition.
  • Basic Patent – a patent protecting any composition, production method, use, medical preparation including the composition, or any medical equipment requiring regulatory approval in Israel.

Based on the court ruling concerning the Appeal to patent term extension for IL 97219 to Novartis (26/12/2005) the term composition means a single active ingredient.

In Novartis, then Commissioner Dr Meir Noam (himself a chemist) ruled that the term basic patent in both Section 64a and 64d relates to the first patent that protects an active ingredient and that the term composition is in the singular, implying that one new ingredient is sufficient and that novel combinations of known ingredients cannot be considered as a basic patent.  A preparation that includes one new ingredient that requires regulatory approval may be protected by extending a basic patent. Combinations, aggregations and synergies of known ingredients may be patentable but such patents are not basic patents.

In this instance, the issue is the regulatory approval of a combination of active ingredients, not the basic patent. Gardasil includes four active ingredients. Each one provides a parallel vaccination effect and maintains its pharmaceutical character. The four proteins are separately synthesized by fermentation in recombinant Saccharomyces cerevisiae (a species of yeast) but are combined into one treatment for economical reasons and due to ease of use.

(HPV Type 16 L1 and HPV type 18 L1 are also components of the registered drug Cervarix registered to a third party, and the proteins are each separately active.  However, Cervarix was registered after Gardasil).

Since the drug Gardasil comprises four separately active ingredients that each has an independent effect and do not work as a synergy, the Commissioner accepted that Gardasil could serve as the first regulatory approval of HPV type 18 L1. He found support in the ruling fo Judge Dotan in the Novartis case. He noted that Merck could have requested regulatory approval for the four proteins separately and the discussion would be moot. Finally, citing the Neurim ruling (13281-06-12 based on the ECJ ruling that Melatonin for treating insomnia was not obvious in light of veterinary treatment for causing sheep to rut earlier), it is clear that the purpose of the Law is to provide patent term extensions for new types of treatment, and there was no reason why the Applicant should have had to register each active ingredient separately.

Furthermore, in Appeal 223/07 Lundbeck vs. Unipharm it was ruled that patent term extensions should be analyzed from an IP perspective and not from a pharmaceutical perspective. The Supreme Court upheld this ruling.

Furthermore, in the medical register, Gardasil is listed as including four active ingredients, including HPV 18 L1, and this is, indeed, the first medical registration of this ingredient in Israel.

Consequently, based on the extension awarded in the UK for EP 1359156, the Israel patent was extended 493 days to 19 July 2017.

Ex Partes ruling concerning patent term extensions to IL 117459 “DNA ENCODING HUMAN PAPILLOMAVIRUS TYPE 18″ to Merck Sharp & Dohme Corp. by Commissioner Asa Kling, 11 January 2015.

COMMENT

This is a publication of an ex-partes ruling. It is possible that local generic manufacturers such as Teva or Unipharm may challenge this.


On Blood Pressure and Diabetes. Can citations post-dating the effective Filing Date be used as evidence of what was known at the time of filing?

February 10, 2015

 

blood pressure

Israel Patent Application No. 140665 to Novartis relates to preparations including Valsartan and Amlodipine for treating high blood pressure and diabetes. The application is a national phase of PCT/EP/1999/004842 and claims priority from an earlier US patent application.

The patent was allowed and published for opposition purposes on 23 December 2012 and is being opposed by both Teva Pharmaceuticals LTD. and by Unipharm LTD.

The Opposers submitted an expert opinion from a Professor Chimlichman to the effect that the combination was known from various publications and his treatment of hyper-tension and thus were lacking novelty at the priority date.

On response to evidence by the Applicant, the Opposers submitted a second opinion in which he relied on two references that were published after the priority date to determine novelty and inventiveness at the time of the priority date. Since these publications were not prior art, the Applicant requested that they were deleted from the opinion and espunged from the record.

Professor Chimlichman claimed that his treatment before the priority date was supported by GYH Lip et al., “The `Birmingham Hypertension Square` for the Optimum Choice of Add-in Drugs in the Management of Resistant Hypertension”, Journal of Human Hypertension (1998) 12, 761-763. Whilst the publication itself was certainly published after the priority date, it relates to clinical tests using the combination of the two drugs and must have been written prior to being published and describes what the authors knew prior to the priority date.

Furthermore, a response to Lip et al. subsequently published in the same journal provides additional evidence that the combinatory effect was known

Whilst accepting that the two publications were not themselves prior art, the opposers argued that they indicated the state of the art at the priority date and should be examined on their merits and not expunged from the record. Furthermore, the additional evidence was brought in response to statements my Professor Daloph, the expert witness of the Applicant.

The Opponents cited Unipharm vs. SmithKline Beechan and Orbotech vs Camtek to support their argument that the papers should be examined on their merits.

Ruling

Opposers are limited in what they can submit in response to the patentee’s evidence. They are not allowed to widen the statement of case. In this instance the additional evidence is supplementary evidence to support their main grounds of opposition, i.e. that the combination was known. There is no evidence given to explain why these papers weren’t submitted in the original round of evidence. The Opposer submits his evidence first and is entitled to respond to the counter-evidence. This gives him a procedural advantage and allowing the submission of additional evidence that could have been submitted in the first submission unfairly disadvantages the applicant.

Comment

Although not allowed to be added to the record, as it could have been submitted earlier, this ruling does seem to indicate that such post priority publications may indeed be used to show what was prior art.


Section 34 – Where an Opposition is dropped and the Adjudicator rules invalidity based on submissions

February 9, 2015

diamond

Section 34 of the Israel Patent Law enables the Adjudicator of a patent Opposition to step into the shoes of the Opposer and rule on the validity of the Opposed patent, even if the opposition is withdrawn.

IL 156034 relates to a system for detecting and mapping flaws in diamonds. The opposer Sarine Technologies submitted a user manual and an affidavit that showed that their competing system was prior art.

The Opposition was dropped, but Ms Bracha ruled that on the evidence, the patent was shown to have been invalid as lacking novelty, inventive step and adequate disclosure.

The Applicants, Serguei Borisovish Sivovolenko and Diamcad N.V and their attorneys, Pearl Cohen-Zedek Latzer Baratz creatively argued that since the Opposer’s expert witness testimony had gone unchallenged it could not be relied upon, and Section 36 should only be used in the most extreme circumstances. They also noted that a Russian court had ruled that a key publication was not being prior art.

Ms Bracha rejected this position as untenable and noted that since Applicant could have challenged the evidence, and failed to do so, it had effectively accepted its validity. The assertion that a Russian court had rejected a piece of evidence as being prior art was not supported by any documentation and anyway was hardly binding on the patent office.

Background 

This application is the national phase of a PCT application filed on 3 December 2001, which claims priority from a European application filed on 4 December 2000. The Application was allowed and published for opposition purposes in the March 2008 journal which published in June 2008 (things have improved since then).

In September 2008, Sarine Technologies LTD filed an opposition, however, on 9 December 2013 the parties announced that they were terminating the opposition without costs. This announcement followed the filing of claims and counter claims and evidence, and after a date for a hearing was set.

On 27 January 2014, the Deputy Commissioner Jacqueline Bracha used her authority under Section 34 to rule that on the submitted evidence, that the claimed invention lacked Novelty and Inventive Step and refused to allow the patent to issue.

On 26 March 2014, the parties challenged her ruling and requested a hearing. They claim to have dropped the affidavit and need to cross-examine the key witness for reasons of costs.

Applicant’s claims 

Applicant claimed that Section 34 which allows the commissioner to act as adversary, instead of merely umpiring an opposition was only to be used in exceptional cases. It only allows the Applicant an opportunity to review newly submitted evidence and not to review the examiner’s work and does not allow the commissioner to rule as if the opposition is not withdrawn. Relying on the user guide of the opposer’s system and on the affidavit of their witness is incompatible with the intention of the legislators intention behind Section 34. The Applicant claimed that wholesale reliance on section 34 would adversely affect the chances of parties coming to an amicable settlement and waste judicial resources.

The applicant claimed that the opposer’s system and user guide had not published and was not in the public domain, and thus the Regulation 74a ruling relying on these was invalid. To strengthen this argument, evidence was brought that in the corresponding Russian proceedings the court had ruled that the opposer’s system was not prior art.

The Applicants considered that there was no evidence that the competing system had been available to the public and, since the opposition was withdrawn, the applicant could not cross-examine Mr Caspi and consequently one could not rely on the User Guide as evidence of the competing system being prior art.

Since Ms Caspi was not cross examined on his statement as the opposition was dropped, it could not be relied upon as evidence. Furthermore, the evidence when submitted was to support the claims of his employer who were then opposing the patent and thus was hardly objective.

Furthermore, even were the competing system to be fairly considered prior art, the claimed invention was novel and inventive thereover due to it mapping flaws in diamonds and taking into account reflection and viewing angles. The opposing system modeled diamonds in three dimensions to measure them and not to locate flaws as claimed in the present system.

The opposition related to eight pieces of prior art and the Applicants claimed that only the refraction angle of the immersion media was measured and not that of the diamond itself.

Claim 4 provides a means of mapping flaws which is novel and inventive over the prior art.

Applicant claims that lacuna in the specification and in whether or not it is enabled as required by Section 12, are not grounds for opposition, and once allowed by the Examiner, cannot be addressed in Section 34 rulings. Finally, Applicant alleges that persons of the art would be able to implement the claimed invention having read the specification, and thus it was sufficiently enabled.

The Ruling

The patent application relates to a method and system for locating flaws in a diamond held in a holder

Claims 1 to 3 relate to a method for localizing inclusions in a diamond wherein

  • said diamond is fixed on a holder
  • A scan is taken of the outer surface of the diamond at an arbitrary initial position
  • The inclusion in the diamond is observed in at least a first and a second direction of observation
  • Wherein the translation and rotation for every direction of observation is registered with reference to the initial position
  • Wherein the registered translations and rotations, the scan of the outer surface and knowledge of the refractive index of the diamond are fed in a computer to calculate 3d image including the inclusion with respect to outer surface in order to localize the inclusion with respect to the outer surface of said diamond.

Claim 4 recites a holder, light source, rotation system for manipulating the holder, a scanner for scanning the face of the diamond, a camera or microscope, a computer and a system for applying the method of claims 1 to 3.

Section 34 grants the Commissioner authority to not grant a patent where an opposition if withdrawn if during the opposition grounds for not having allowed the patent were uncovered. There is little discussion of Section 34 in the case law as it is a relatively rare phenomenon.

The opposition process is considered as a continuation of the examination and is designed to prevent unjustified patents issuing. Merely having survived the formal examination does not, in and of itself entitle an applicant to a patent. The patent office uses the tools at its disposal to uncover prior art and the opposition provides interested parties the opportunity to bring additional art to the attention of the commissioner. Allowance is no guarantee that a patent will be granted.

The Deputy Commissioner considers the Opposition as a kind of judicial review and the Commissioner (or deputy Commissioner / adjudicator standing in his shoes) can review the examiner’s work and over rule it. He has the authority to consider all materials of record and the narrow interpretation proposed by Applicant is rejected.

As to the evidence, the user manual dated fro 1995 and shows that DiaExpert’s  competing system was available years before the application was filed.  When Opposer alleged that the system was on sale from 1996, this was not challenged by Applicant. Now that the opposition has been dropped, there is still no evidence that challenged the availability of the system from 1996. In such cases, the Applicant has to provide evidence rebutting the assumption of availability. The purpose of the Patent Law is to prevent ideas already in the public domain from being patented. Without evidence to the contrary, Ms Bracha saw no reason to reverse her decision that the manual was in the public domain and was prior art. Furthermore, Applicant had had an opportunity to challenge the Opposer’s submission that the system and its user manual was prior art and had not done so.

The assertion that a Russian Court had accepted that the opposer’s system was not prior art was not backed up with any evidence, so Ms Bracha saw no reason to relate to it. Indeed, a ruling by a different court is not binding in Israel.

Mr Caspi’s affidavit went unchallenged. That does not mean that since the Applicant chose not to challenge it, the affidavit is not admissible. Rather, it appears to have been accepted as unchallenged. Both the Applicant and Ms Bracha could have cross-examined Mr Caspi, but decided to accept his testimony. True, he was a witness for the opposition and an employee of theirs, but that is of interest only when deciding how much weight to place on a testimony when challenged. No substantive grounds to challenge this testimony were submitted. The court needs to be wary of accepting evidence at face value submitted by those with invested interest, but the Applicant could have cross-examined the witness and chose not to.

When combining the user manual and the other pieces of prior art, claims 1 to 3 and 4 all lack novelty and inventive step. Ms Bracha went on to argue that Section 12 was also fair grounds to reject a patent during oppositions, since Section 34 allows the adjudicator at the patent office to refuse to grant a patent on any grounds under which it never should have been allowed.

Section 34 ruling concerning IL 156034 to Serguei Borisovish Sivovolenko and Diamcad N.V. Ruling by Ms Bracha 25 January 2015.

COMMENTS

The Deputy Commissioner is correct on all counts. The Opposer is really serving the public interest in challenging the validity of allowed patents. In addition to personal commercial considerations, the opposer represents the public. Section 34 is designed to prevent the bribing or buying out of an opposer from resulting in an opposition being dropped and the patent issuing automatically.

The Patent Office is authorized to continue an opposition by stepping into the public’s shoes and has to consider the public interest, and must refrain from granting patent.

The arguments submitted in this case by Pearl Cohen Zedek Latzer Baratz are untenable. They seem to think that if their client comes to an arrangement with an opposer so that the opposer drops the opposition, the patent office should rubber stamp this state of affairs rather than to review the case on the evidence, contrary to Section 34.

Maybe PCZL may be congratulated on their creativity. Possibly as advocates for their client, they can be forgiven for filing spurious arguments without a chance of success. After all, when one goes out to do battle, one can only fight with the weapons available. In this case it seems that the applicant should have come to a settlement with the opposer before the evidence was submitted. Once the cat was out of the bag it was too late.

I am reminded that at a recent meeting between trademark examiners and the profession Ms Dor Cohen-Zedek, the head of the trademark department at PCZL argued that in competing marks cases and oppositions there should be a presumption of validity for her clients.


Can post priority-date publications that describe clinical practice be considered prior art?

February 5, 2015

exforce

Israel Patent Application No. 140665 to Novartis tited “Use of Combiantion Compositions comprising Valsartan and Amlodipine n the preparation of medicaments for the treatment and prevention of diabetes related hypertension” relates to preparations including  Valsartan and Amlodipine for treating high blood pressure and diabetes.

The application was a national phase of PCT/EP1999/004842 from 9 July 199 and claims priority from an earlier US patent application.  The patent was allowed and published for opposition purposes on 23 December 2012 and is being opposed by both Teva Pharmaceuticals LTD. and by Unipharm LTD.

The Opposers submitted an expert opinion from a Professor Chimlichman to the effect that the combination was known from various publications and his treatment of hyper-tension and thus were lacking novelty at the priority date.

On response to evidence by the Applicant, the Opposers submitted a second opinion in which he relied on two publications from after the priority date to determine novelty and inventiveness at the time of the priority date. Since these publications were not prior art, the Applicant requested that they were deleted from the opinion and expunged from the record.

Professor Chimlichman claimed that his treatment before the priority date was supported by GYH Lip et al., “The `Birmingham Hypertension Square` for the Optimum Choice of Add-in Drugs in the Management of Resistant Hypertension”, Journal of Human Hypertension (1998) 12, 761-763. Whilst the publication itself was certainly published after the priority date, it relates to clinical tests using the combination of the two drugs and must have been written prior to being published and describes what the authors knew prior to the priority date.

Furthermore, a response to Lip et al. subsequently published in the same journal provides additional evidence that the combinatory effect was known.

Whilst accepting that the two publications were not themselves prior art, the opposers argued that they indicate the state of the art at the priority date and should be examined on their merits and not expunged from the record. Furthermore, the additional evidence was brought in response to statements my Professor Daloph, the expert witness of the Applicant.

The Opponents cited Unipharm vs. SmithKline Beechan and Orbotech vs Camtek to support their argument that the papers should be examined on their merits.

The Ruling

Opposers are limited in what they can submit in response to the patentee’s evidence. They are not allowed to widen the statement of case. In this instance the additional evidence is supplementary evidence to support their main grounds of opposition, i.e. that the combination was known. There is no evidence given to explain why these papers weren’t submitted in the original round of evidence. The Opposer submits his evidence first and is entitled to respond to the counter-evidence. This gives him a procedural advantage and allowing the submission of additional evidence that could have been submitted in the first submission unfairly disadvantages the applicant.

In this case, the additional information is not prior art in the public domain, or it would not have been accepted for publication. It post-dates the application and is, therefore, not prior art. The Deputy Commissioner did not consider this material as indicating what was widely known prior to the priority date. The Opposers are trying to use the citations of Lip to show what was known prior to the priority date, and to do this, they should have submitted these citations in their statement of case.

Whilst not wishing to rule out using a paper that provides history of what was known earlier, the Deputy Commissioner warns against the danger of a hindsight bias and of reading the authors conclusions into the prior art.

As to the Opposers argument that the Applicant should have submitted an affidavit to support the evidence, Ms Bracha rejected this as the dates are not contested and so an affidavit is unnecessary.

In conclusion, Ms Bracha ruled that Sections 25-26 and 86-88 of the second opinion should be deleted. Legal costs of 5000 Shekels were ruled against the opposers.

COMMENT

In the DSM  vs. Mifalei Migun case, Judge Judith Schitzer of the District Court correctly ruled that one does not have to submit an affidavit with every piece of evidence or statement, so the Deputy Commissioner is correct on this account.

As to the late submission of evidence however, I think that the Opposers can fairly be penalized for not timely submitting these papers by having interim costs awarded against them for not submitting the evidence earlier, but the evidence should be related to substantively if it testifies to what was practiced prior to the patent being filed and not thrown out on procedural grounds. Ultimately the purpose of the Opposition proceeding is to clarify novelty and inventiveness to protect the public interest. If a drug becomes patented and should not be, the public will pay monopoly prices. Sure, the opposers have to answer as to why these papers were submitted late. Maybe the applicant should be given a second chance to respond and compensated for delays, but I disagree with this decision to throw out what could be key evidence.


Plasson

January 25, 2015

PLasson

Plasson manufactures pipe couplings. Unidelta launched a competing product and Plasson claimed patent infringement of their patents IL 125899 and IL 127327 and passing off and requested an injunction. The District Court accepted the charges that the “main point of the patent” was infringed and issued an injunction preventing the manufacture, import or sale of Unidelta’s pipe connections in Israel as they are a copy of Plasson’s product. On Appeal, the Supreme Court overturned the finding of patent infringement and referred the case back to the District Court. The Supreme Court ruled that where the similarities between the allegedly infringing product and the patented invention lie in features that are in the public domain, there can be no case of infringement.

Background

In addition to literal infringement of the claims of a patent, Section 49 provides grounds for legal remedies where the kernel of the patent is copied. This is rather like the “pith and marrow” doctrine in the UK. Essentially, the Law provides remedies where claim infringement is avoided by a technicality, and may be seen as similar to the doctrine of equivalents. Arguably contributory infringement and inducement to infringe may be considered as judicial extensions of this doctrine. It is important to allow general inventing around, but to avoid situations where poor claim drafting can result in no literal infringement of the claims.  What the Supreme Court has done is to clarify the extent of application of Section 49.

Ruling

Judge Meltzer of the Israel Supreme Court ruled that Section 49 provides monopolistic powers to the patentee to prevent literal infringement of the claims defining the invention and also similar products / processes that infringe the kernel of the invention. In this instance, both parties accept that there is no literal infringement so the only issue is the kernel of the patent. The kernel cannot be wider than that described in the Specification and, where the patent is for a device or system comprising a combination of known parts, the kernel of the patent cannot include the parts themselves. In this instance, the District Court did not address the question of what the kernel of the patent is, and without identifying the kernel of the patent, it is impossible to establish that this is infringed by Unidelta’s product. Once the kernel is established, the court must consider whether the infringing product operates in a similar way to achieve similar results.

The Supreme Court ruled that the patent issued because of a limiting feature added to the other components.

The main claim recites:

“1. A pipe coupling comprising a tubular housing having an axial bore adapted to receive a pipe end to be coupled and having an externally threaded housing portion and an inner housing abutment; a pipe gripping sleeve having formed therein a plurality of substantially equiangularly distributed, axially directed slits extending from a first end thereof to a region adjacent to but spaced from a second and opposite end thereof thereby defining an integrally formed, axially distortable, ring-like sleeve end portion, a first axial portion of said sleeve, through which said slits extend, tapering externally from a peripheral, outwardly directed flanged portion towards said first end and being formed with a plurality of inwardly directed, axially spaced apart serrations; a tubular collar having a first inner axial portion tapering from an inner collar abutment to a first end of said collar and a second inner axial threaded portion extending from said collar abutment to a second and opposite end of said collar; and a flexible sealing ring; the arrangment of said coupling being such that with said pipe end extending through said collar, sleeve, sealing ring and housing, said collar is screw fitted on said housing, said sleeve is located in said housing and said collar with said flanged portion located between said collar abutment and an adjacent end of said housing and said sealing ring is located between said sleeve ring and said housing abutment; screw tightening of said collar on said housing causes the respective tapering portions of the collar and sleeve to be mutually displaced with the gripping contraction of said sleeve about said pipe end and the axial compression of said sealing ring about said pipe end”.

Plasson’s patent is for a ring fitting that includes a wide and flexible ring that enables different sized pipes to be attached together in one smooth motion without dismantling the connector. Since Unidelta’s system did not include this limiting feature, but merely combined pre-existing components to create an alternative pipe fitting, there was no infringement of the kernel of the patent.

Quoting from the specification:

Pipe couplings of the type herein described, which are presently in wide-spread use, normally require pushing the pipe through the seal (typically an O-ring) in the bore of the body member in order to achieve compression of the O-ring on the pipe, and thus a leak free joint. However, for pipes of large diameters, the operation of pushing the pipe through the O-ring seal requires a large force, making the operation very difficult, and sometimes even necessitating an extra operation of chamfering the pipe end for this purpose.

A further disadvantage in the pipe couplings of the type herein described now in use is that such couplings do not tolerate substantial variations in the pipe diameter so that precise pipe diameter tolerances must be maintained, or a large number of different-size couplings must be produced for the different diameter pipes to assure good sealing and gripping actions”.

“…a pipe coupling constructed in accordance with the foregoing features provides a number of important advantages including: convenient assembly, since the particular seal, in its relaxed condition, introduces very little resistance to the forceful entry of the pipe during assembly; …increased diameter range of pipes capable of being coupled, since the two-ribbed (or three-ribbed) sealing ring can accommodate substantial differences in diameter sizes…”.

This emphasizes that Plasson did not invent the only pipe coupling for joining pipes of different diameters, and there patent was limited to one that is easy to seal due to little resistance.

As to passing off, the Supreme Court was critical of the District Court for finding this without explanation of why they considered that this was applicable. The Supreme Court referred the case back to the District Court for further consideration on this issue.

Judge Meltzer established costs against Plasson of 75000 Shekels.

Judge Miriam Naor (now president of the Supreme Court) commended Judge Melzer on reducing the issue to non-technical matters without technalese that regular people could understand.

Appeal 6750/10 Unidelta vs. Palson, Supreme Court 18 December 2014

COMMENT

One wonders who the non-technical people are in this case, plumbers or the President of the Supreme Court? Is the technical issue here flanges and pipes, gaskets and washers, or non-literal infringement, pith & marrow and other legalese?


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