Israel Patent Office to Allow Electronic Filing

November 11, 2015


On 21 October 2015, the Israel Patent Office published amendments 1 and 2 to the patent regulations for 2015.

The amendments come into effect as of 20 December 2015.

The first amendment regulates:

  • Electronic filing of patent applications, documents and notices and the requirement for applicants to identify themselves
  • Receipt of Office Actions and other documents by email from the Israel Patent Office
  • Intermediate requests in inter-partes actions
  • How documents should be exchanged in inter-partes actions
  • How printed submissions should be made, and that the front-page is no longer required
  • How post-allowance amendments should be made
  • The request for applications to be signed has been cancelled
  • The obligation on Mentor to alert the Patent Office regarding the start of training for trainee patent attorneys and when they have to do this
  • Appeals to the Commissioner regarding non-final rejections
  • Discounts in filing fees for Schools of Higher Education and Tech Transfer Companies

Applicants wishing to file on line have to identify themselves with a smart card, and the way such smart cards may be obtained has been published.

Those wishing to receive Office Actions by email are provided with a link for so-doing.

There is a training day for patent attorneys to learn the new system. This will be held at the Israel Patent Office on 15 December 2015 between 9:30 and 12:00.

Israel Patent Office Statistics 2014

September 21, 2015

statistics 2
Under the Rules for Disseminating Public Information, the Israel Patent Office has published its annual report for 2014. The report may be found Annual Report 2014_(Hebrew). The English version is not yet available.
Paper windmill

The most interesting thing about the report is probably the graphics. Following previous years where the report was decorated with paper airplanes and paper hot air balloons, this year’s report is embellished with paper windmills. Why? The Answer, My Friends, is Blowin in the Wind.

I don’t intend extensively reproducing the graphs. Frankly they are not all that interesting. Instead, here are some observations and possible explanations.

6273 Patent Applications were filed in Israel in 2014 which is slightly up from 6184 in 2013, but still significantly lower than the 6793 applications filed in 2012. Indeed, Apart from 2013, the number of patent filings for 2014 was the lowest in a decade which peaked at 8051 applications in 2007. Applications pending examination are also down and more applications are being allowed. We attribute this to the fact that a precondition for the Israel Patent Office being an International Search and Examination Authority was for there to be a minimum of 100 examiners. This gives a favorable Examiner to application ratio that has resulted in shorter backlogs and more efficient examination.
18% of Applications are filed by local entities in 2014 which is the highest in the past decade. This statistic probably reflects the fact that many of the historic advantages of provisional applications are no longer the case and that small timers paying a reduced filing fee may find filing in Israel cost-effective compared to the US. Of course what this also means is that foreign filings made up a mere 82% of total filings in 2014, down from 88.8%. By a little mathematical manipulation, it seems that the number of foreign patent filings into Israel has dropped by about 250 or by 6.75% in the past year.

In an earlier post, I reported on a study by BdiCoface which found that 3,555 Israel based patents were filed in the US.  During this same period, only 1129 cases were filed in Israel by Israeli entities. In other words, Israelis and Israel companies are three times as likely to file in the US as in Israel. Some technologies, such as security related ones have to be first filed in Israel. Some cases, such as methods of treatment, are only patentable in the US. Nevertheless, filing Israel patents is clearly not a priority for Israel based patenting entities. It is certainly true that Israel is a small market. Nevertheless, since enforcement is considerably cheaper in Israel than in the US, I think that companies should consider filing in Israel more seriously. Particularly where there are Israeli employees and business partners.

After a slow start in 2011-2012, There has been a sharp rise in accelerated examination in Israel by suing the Patent Prosecution Highway, with 94 applications being examined via the PPH.

Interestingly, some 22 administrative decisions were made in 2014 to allow late entry into Israel from a PCT application of which 18 were favorable. Israel holds the relatively high standard of allowing late filings in circumstances that are ‘unavoidable’ rather than merely ‘unintentional’. I wonder if the 18 cases were truly missed deadlines due to acts of God, earthquakes, postal strikes and the like, or if the patent office is becoming more lenient in this regard?

Fascinating Bits of Trivia

As usual, the report includes some fascinating statistics such as Israel being the 24th most popular patent filing destination in the world, slightly more popular than the Ukraine, but less popular than New Zealand. When normalized by GNP, Israel remains the 30th most popular destination in 2013, with 480 patents per billion US dollars. This puts Israel ahead of Ireland at 449 patents per billion US dollars, but slightly behind Kazakhstan with 493 patents per billion US dollars. When normalized for population size, Israel comes in at 28th place with 149 patent applications per million residents. This is slightly less than Latvia (151) and Belarus (167) but ahead of Iran (146 patents per million).

There is a rallying in the number of PCT applications filed by Israelis, both in Israel and elsewhere which may indicate that we are pulling out of the effects of the World Wide Recession.

Some 59.4% of PCT applications filed in Israel specify Israel as the International Search Authority, up from 55% in 2013 and probably indicating customer / attorney satisfaction with the International Search Reports issued. In 2014, Israel conducted 9 ISRs for PCT cases outsourced by the USPTO. This was a mere pilot and may become a popular service.

A very significant percentage of patent applications filed in Israel are for pharma technologies. This presumably reflects the strong Israel pharma industry including Teva, Neurim, and generic companies such as Unipharm and Perrigo (technically an Irish company, but largely ran from Israel) rather than Israel’s attractiveness as a market.


The number of design applications filed in Israel last year was 1384 which is slightly higher than 2013 when 1353 design applications were filed, but still lower than for every year from 2004 through 2012. This follows the trend seen with patent applications filed in Israel. Bck in 2008, 1775 design applications were filed, so there is certainly potential for more of this type of work.

We anticipate that plans for Israel joining the international system for filing design applications will probably increase the number of designs filed into Israel, but reduce the billable work for patent attorneys. This is what happened with trademarks, where there has been an overall increase in trademark applications but this is mostly due to the Madrid Protocol applications designating Israel, and there has been a drop in trademark filings filed directly into Israel and thus a similar drop in billable work for patent and trademark attorneys.


With less work coming in, and an increase in both legitimate competition and illegitimate, i.e. licensed practitioners including patent attorneys and attorneys-at-law, encroachment from non-licensed practitioners, including jumped up paralegals, retired examiners, failed patent attorneys, retired US practioners and US companies that operate directly in Israel such as Finnegan et al. and others, there is apparently more people after less work, and things are unlikely to get better quickly.

It is easy to blame the depressing statistics on international trends and to see this as the fall out of the World Wide Depression. Indeed, filings peaked in 2007, and the Lehmann Brothers went bankrupt and things started spiraling out of control in 2008. Nevertheless, it is not impossible that the IPO can do to reverse the trend, or to speed up the recovery. I would suggest that the very fast and significant increases in various Israel Patent Office fees coupled with the relatively strong Shekel may be turning away potential filers. The USPTO and EPO essentially set fees to cover operating costs. The Israel Patent Office is a cash cow that generates income for the Israel Government and which has an income that is apparently twice its operating costs. I would suggest that many fees could be reduced to pre-Greed levels and salaries for Examiners and other IPO staff could also be increased to levels more commensurate with what attorneys in private practice earn. This can only increase the quality of the Israeli examination. With greater motivation, examination periods might become even shorter and standards might increase. This together with reduced filing and other fees could make Israel a more attractive component of potential IP portfolios.

Religious Perspectives on Intellectual Property

September 10, 2015

The bishop's gambit

My talk was part of the opening plenum titled Religious Perspectives on Intellectual Property. The chairperson and other speakers were a Bishop, an Archbishop and a Cardinal. We all wore similar charcoal suits, but whereas I wore a white shirt and regular tie, rather like the sort of thing I’d have worn to Synagogue in the UK, the others wore black shirts and dog collars. I felt a little like a bagel at Mass, although everyone was very friendly.

The plenum was chaired by the Rt Rev John Sherrington, Auxiliary Bishop of Westminster, Department of Christian Responsibility, The Catholic Bishops’ Conference of England & Wales’. Right Reverend Sherrington is a delightful chap that I could imagine spending a happy evening with in a pub. He wore the largest Crucifix I’ve seen around someone’s neck outside a vampire movie. Apparently, the cross is worn opposite the heart and a ring, symbolizing marriage to the church, is worn on the finger. I reflected that Judaism has bondage style black strapped phylacteries (Tefillin) that hold the paragraphs of the first and second paragraphs of the Shema (dealing with Unity of God and reward and punishment in the Promised Land) and other texts in a box worn on the triceps opposite the hand, and the strap is wrapped seven times round the forearm and then thrice around the finger, symbolizing past, present and future as a sort of eternity ring, whilst reciting Hosea 2: 21 “And I will betroth thee unto Me forever; yea, I will betroth thee unto Me in righteousness, and in justice, and in lovingkindness, and in compassion.” Although the symbol is different, the symbolism is the same.

His Eminence Archbishop Silvano M. Tomasi, Apostolic Nuncio: Permanent Observer of the Holy See to the UN Office in Geneva & WTO spoke on “The contribution of the Holy See to the Intellectual Property debate at the multilateral level”. This was followed by a talk titled “IP Rights and the Fundamental Right to the Commons in the Light of Catholic Social Teaching” by Monsigneur Osvaldo Neves de Almeida, Holy See Secretariat of State, with responsibility for TRIPs (WTO), UNCTAD and formerly for WIPO.

Archbishop Tomasi spoke very well, but didn’t say anything substantive. There was nothing notably Catholic about it. No scriptural references. There was a lot of pontification about respecting patents and copyright as private property whilst finding a balance with the common good and the importance of feeding the poor. The overall effect was somewhat similar to what might happen if an eminent Rabbi were to be asked to address a mixed faith academic conference. As I pointed out in the subsequent discussion, IP Law attempts to do just that but providing geographical and time limited monopolies and fair use clauses. It seemed to me that either the Catholic Church’s representation at WIPO has no effect, or, the various international treaties governing IP resulted from Catholic teaching.

Monsigneur Osvaldo Neves de Almeida’s talk was more interesting. He gave the impression of having more specific knowledge regarding both ethical issues relating to IP, and the church’ position. However, his English, though far superior to my Latin, was nevertheless not great. I think there is a problem that Catholic Bishops are conformists. One cannot expect two bishops to assume different positions, or a third bishop chairing the event, to ask a challenging question. Also, like most Rabbis, it seems that bishops don’t feel the need to use slides. Unlike many Rabbis, they also don’t seem to use parables or jokes to try to engage the audience.

I was afraid that the audience were quietly phasing out, and when I took the podium I decided to wake them. I asked for a quick show of hands to determine which members of the audience were theologians, which were academics and which were patent practitioners.

Vicars and Tarts  see also BBC REV! Series 1 Episode 6.

I then stated that if, instead of a serious, erudite and formal conference, this was a ‘Vicars and Tarts party’ and, after, about two minutes, when the laughter had died down enough to finish the sentence, I noted that I’d have come along as a tart, since I, like other patent attorneys, was an Intellectual Prostitute in that I used my skills to provide services to anyone willing to pay and that I don’t have any professional morals, or at least very few.
I spoke on “Patents, Life and Social Justice: Musings of a Mosaic Maven”. I started with noting that the classic sources such as the Bible, the Talmud and Responsa literature have a lot to say about life and about social justice. However, since patents have only been around since towards the end of the 18th century, there was nothing about patents, and thus nothing about life, patents and social justice. However, I discussed a fascinating anecdote brought in the Babylonian Talmud (Avoda Zara 28a) that relates to life, trade secrets and social justice:
We have a Tradition:
Rabbi Yohanan* suffered from scurvy#. He went to a Roman matron on Thursday and
again on Friday, and received some medicine for his gums. He asked her what he should do the
following day [Shabbat], and she told him that he was cured. He asked for details of the treatment and swore to the God of Israel that he would keep her secret. She told him the treatment. The following day at the beginning of his Sermon, Rabbi Yohanan announced the treatment.

Question – but he’d promised her. Answer, he’d already told her that it wasn’t a real
Question, but he’d swore on the God of Israel. Answer, not exactly. He’d swore to
the God of Israel, i.e. not to reveal to God [who knows all things anyway, but hadn’t
sworn not to tell people.
Question, but it is a Hillul Hashem – a desecration of the Divine Name. [this is the typical term applied to Jews behaving badly in front of non-Jews]. Answer, he told her that he’d break his promise.
Said R. Nahman b. Isaac: Scurvy is different, because although starting in the mouth it extends to the intestines.

Babylonian Talmud Avoda Zara 28a
*180 – 280 C.E. Tzipori (Galilee, Israel – the cure evidently worked as Rabbi Yoachanan lived 100 years!
# Tsadfina – Greek Sӗpedόn (putrid abscess), related to sӗptikόs (Latin, Septicus → septic

Rabbi Nahman b. Isaac’s explanation is that since scurvy is a fatal disease, the common good reflecting the right to know, outweighed confidentiality and the personal property rights of the Roman matron.

I then discussed the political, historical and theological ramifications of the Weizmann patent, a fairly insignificant 135 line document that described using bacteria to make acetone and butanol. Acetone helped the British synthesize explosives and was very significant in the British War Effort in World War I and butanol enabled the US to make butadiene for artificial rubber in the World War II. Amongst other ramifications, Weizmann’s influence, resulting from the patent, was instrumental in securing the Balfour Declaration and US recognition of the State of Israel, an event that I suggested had theological ramifications for Christians. Having run out of time, I skipped to recent cases and concluded that most controversial issues concerning life science patents, such as BRAC gene patenting, patent term extensions for medicines and the like, were really issues concerning whether or not one believed in capitalism. The main exception is stem cell research which is not patentable subject matter in Europe following Catholic pressure, since Catholics see life as starting with conception. Judaism sees life as starting at 40 days, when membranes form, which, a bio-ethicist explained to me actually comes from Aristotle. That as may be, in Israel, there is no opposition to stem cell research from Rabbis or from religious parties. One hopes that if any treatments result, that Catholics and other Christian groups with similar beliefs will be prepared to use the treatments and won’t see them as being the fruit from the poisoned tree. The full 11,000 word paper will be published shortly.

Over coffee (accompanied by Walkers biscuits with have a (U)D Kosher Certification) a Catholic professor quoted Milton Friedman to the effect that companies’ only purpose is to make money, and disagreed with bishops seeing companies as having a responsibility towards the third world. I am aware that there are dissenters to Friedman’s position, but don’t think that companies have moral or religious duties, only people do.

It occurred to me that none of the senior Catholic clergymen could have made the Vicars and Tarts joke. Furthermore, due to Papal infallibility, the Auxiliary Bishop chairing the plenum could not challenge the Archbishop or the Cardinal.
Afterwards, I had some other realizations that were more disturbing. It seems that due to a combination of factors such as recent pedophilia scandals, the secular mainstream and the fact that Catholicism is a minority faith in the UK, even bishops are unable to preach. All three steered clear of concepts such as God, faith or religious duty.

To put it another way, the previous evening I’d seen the ABBA juke-box musical Mama Mia in the West End. The story line is about 20-year-old Sophie who is preparing to marry her fiancé. She wants her father to walk her down the aisle but does not know who he is since her Mother Donna had had intimate relations with three men. As a pregnant single woman, she’d been thrown out of the house. Sophie wanted to get married so that her children would know who their father was. One of the candidates was homosexual. One had stayed faithfully married to a women he didn’t love. Donna’s girlfriend was twice divorced. In other words, the musical had more to say about personal life choices than either of the bishops’ lectures.

Disturbingly, Monsigneur Osvaldo Neves de Almeida mentioned the three transcendental religions, Catholicism, Islam and Judaism. I realized that as a Jew, I was acceptable to be on a panel with them, however, the Presbyterians, Anglicans, Evangelicals and others in the audience were not. I had had similar issues at the event I arranged in 2011. I was blocked from having non-Orthodox professors presenting.

Ketchup Wars

August 20, 2015

Heinz has removed the Hebrew transliteration of Ketchup from bottles of their iconic sauce. The reason? Israel has a standard for Ketchup that Heinz doesn’t come up to. Specifically, Israeli Ketchup contains a higher percentage of tomato extracts than Heinz’ tomato flavored condiment.

I read about this development in Yesterday’s Idiot Acharonot (Israel’s largest circulation fish & chips wrapper newspaper) whilst enjoying a leisurely breakfast on holiday in the Galilee.  The topic is a hot sweet & sour issue among fellow Anglo-American Immigrants who I am in contact with on Facebook.

To those of us who grew up in the UK or the US, Ketchup meant Heinz. Heinz launched its first Tomato Ketchup in 1876, Heinz was at the forefront of exploring natural preservation, and in 1906 was first to launch a Ketchup free from artificial preservatives. To prevent it growing a beard without fungicides, it includes enormous amounts of sugar and vinegar.



There never were 57 varieties of ketchup or indeed of anything else. Nevertheless, worldwide, Heinz is the #1 ketchup.

In the 17th century, the Chinese mixed a concoction of pickled fish and spices and called it (in the Amoy dialect) kôe-chiap or kê-chiap (鮭汁. By the early 18th century, the table sauce had made it to what is now Malaysia and Singapore, where it was discovered by English explorers. The Indonesian-Malay word for the sauce was kecap (pronounced “kay-chap”). That word evolved into the English word “ketchup”, and English settlers took ketchup with them to the American colonies.

In the United Kingdom, preparations of ketchup were historically and originally prepared with mushroom as a primary ingredient, rather than tomato. Ketchup recipes begin to appear in British and then American cookbooks in the 18th century. 

So the term Ketchup doesn’t imply containing tomatoes at all. It really simply means a savoury sauce. Nevertheless, to most of the world, the term relates to the thick dark red sauce that Heinz manufactures and distributes.

In Israel, a variety of condiments are sold as tomato ketchup. The most widely distributed and probably the best of them is Osem’s ketchup, which also comes in a distinctive container that is perhaps as well recognized in Israel as Heinz’ is elsewhere. I prefer Heinz’ Ketchup as it the taste I grew up on. My Israeli kids prefer Osem’s.

To put the argument into some kind of perspective, I’d like to use the analogy of mustard. I am sure that for British ex-patriots like me, mustard is a very strong condiment prepared from a powder. Coleman’s mustard has a long and distinguished history.

Jeremiah Colman founded Colman’s of Norwich in 1814. To create a tangy flavour, he blended brown mustard (Brassica juncea) with white mustard (Sinapis alba). From 1855 the firm introduced its distinctive yellow packaging and bull’s head logo, and in 1866 was granted Royal Warrant as manufacturers of mustard to Queen Victoria. The royal household still uses Colman’s today.

colmans mustard

Now the French make an entirely different condiment called Dijon mustard, that is rather milder. Americans have a sort of yellow ketchup that they call mustard, but which has no similarity to English mustard. One could envisage the UK banning American mustard from being sold as ‘mustard’ without a qualifier, such as ‘American style’ mustard. Similarly, one could imagine Americans requiring Colman’s Mustard to be sold with a government health warning that it should be consumed in small quantities only, and that it is rather different than what Americans are used to.

Israeli bottles of Heinz Ketchup will still have the word Ketchup on their labels in English, just not in Hebrew. Presumably English and American immigrants will see that the sauce is what they are looking for, and Israelis will appreciate that the condiment is something different. It is not a bad compromise. However, as the term ketchup doesn’t actually imply tomatoes and the average consumer is aware that condiments from different companies taste slightly different, and since both Heinz and Osem’s ketchup bottles feature the name of the manufacturer clearly and each comes in a distinctive bottle, I am not convinced that this is really necessary.

namesred mug

There are, of course, Israeli precedents for this type of thing. Nestle’s Nescafe Original was marketed in Israel as Red Mug. They couldn’t call it Nescafe as the term was generic. The Hebrew word Nes means miracle, and, where Elite’s Cafe Namess (soluble coffee) was known as Nescafe (miracle coffee), there was no way for Nestle to obtain a trademark for Nescafe.

Pips Cola

Prior to the Oslo accords, Pepsi Cola was not available in Israel, as Pepsi decided to kowtow to the Arab boycott. A Galilean Arab sold a locally produced cola as Pips Cola. When Pepsi entered the Israel market they tried to get an injunction against the Arab manufacturer. The Israel courts correctly noted that they had abandoned the local market. They ended up having to buy him out.

For British readers of my generation, I refer to classic Goodies Episode “The Bunfight at the OK Tearooms“, where ketchup as a metaphor for movie blood and gore was taken to its logical conclusion.


Deleting Documents in Patent Cancellation Proceeding

August 4, 2015

fighting robots

Aquatron and Maytronics are competing Israeli companies that each make pool cleaning robots.

Maytronics was awarded Israel Patent IL 206154 titled “Pool Cleaning Robot”. Aquatron filed to have the patent cancelled.

In the cancellation proceedings various issues came up such as whether Aquatron had received permission from Maytronics to use the patent. However, in a procedural agreement between the parties, it was decided that the summation statements would not to relate to this issue.

In their summation, Maytronics, did, however relate to the alleged license to use the patent, and so Aquatron filed to have the relevant passages deleted from the file. In their defense, Maytronics’ argued that Aquatron had submitted emails that related to the agreement as part of their evidence, and this had voided the procedural agreement.

Ms Jacqueline Bracha used Contract Law (section 25a) to rule that what was agreed between the sides is binding. Had they intended to state that evidence should be suppressed they could have done so. The disputed sections on the patentee’s summation were ordered deleted from the record, but the emails submitted by Aquatron were allowed.

Israel Supreme Court Issues Long Awaited Decision regarding Service Inventions

July 23, 2015

employment agreement

Isscar is a leading Israel company that manufactures hard metal cutting tools. As an employee at Isscar, Gidon Barzani was involved in the development of hard metal cutting tools at Isscar during the years 1992 to 1995, and again between 1997 and 2001 and was involved in a certain service invention, his actual contribution being a matter of contention. The employee signed various documents that gave up on monetary claims.

In Israel, an employee invention is owned by the employer. However, under Section  134 of the Law, the employee is entitled to compensation, the amount of which is determined by a special committee under Section 109.

The Committee, at the head of which sits the retired Supreme Court Justice, Itzak Englard, the Commissioner of Patents and an university professor, rejected Barzani’s claims as he had had waived his rights to consideration for the inventions when he signed on the general waiver.

Barzani appealed to the Supreme Court as a High Court of Justice (BAGATZ) see here which resulted in the committee freezing its actions.

One of the more interesting legal questions is whether a general waiver as part of the employment contract, where no invention is yet conceived can be considered as legally binding. (Talmudist’s may note a similarity to discussion of unlaid eggs).

The Supreme Court rejected the appeal arguing that it had limited power to interfere since under Section 111, the Bagatz ruling was final. The Supreme Court ruled that Section 134 describes a non-cogent right that is not a socialist employee right that requires special defense. On the face of things and with deference to the language of the clause, the decision appears to be correct, and certainly is sufficiently reasonable that there is no justification for court interference.

Nevertheless, the court noted that in a dynamic and changing world there is room for additional legislation or for companies to come up with voluntary compensation schemes. However, there is no reason for the court to interfere.

Judge Reuven, Deputy President of the Supreme Court quoted Section 109 of the Law as follows:

Where there is no agreement providing compensation to the employee for his service invention, regarding the amount of compensation and the conditions, these will be determined by the Committee for Compensation and Royalties.

Section 111 fixes the finality of the committee’s decision, but there is no doubt that in extreme circumstances, the Supreme Court sitting as a High Court of Justice can interfere. Since, however, the committee includes a retired senior court justice, the commissioner and an academic, interference in its conclusions are likely to be minimal, and this instance does not justify the court’s involvement.

The main argument, following the Actelis ruling of 2010 is concerned with the question of whether Section 134 should be considered cogent or dispositive. The committee came to the conclusion that it is not a cogent right and is not an example of employer-employee labour law where (due to the inherent differences in power between the sides) workers’ rights require special protection. The ruling seems to be correct, but anyway, since the Law states that the committee’s rulings are final, there is no room for the court to interfere.

Nevertheless, the court has criticized the current situation and noted that common sense and natural justice indicate that there is room for a more equitable arrangement,  whether the result of voluntary agreement or of legislation, and such arrangements exist in the private sector.

4353/14 Appeal to Supreme Court, Barzani vs. Isscar, Ruling by Rubinstein Fogelman and Mazuz 8/7/15


There was a lot of interest in this case, and we believe that employers will be giving deep sighs of relief. Employees will probably feel that the system favours the company against the individual. I am aware that some academics have strong feelings, see for example, Dr Shlomit Ravid’s position here and here.

Since the court has criticized the committee’s ruling and is not prepared to get involved, it is not inconceivable that a future committee could reach the opposite conclusion. Indeed, one of the judges of this ruling might, on retirement, sit in such a committee. There may, therefore, be room for clear legislation on the issue.

Personally, I think the Supreme Court decision is correct. I encourage corporate clients to institute compensation programs or at least weekend breaks and the like to encourage employees to come forwards with ideas, but think that changing the law in Israel may result in multi-nationals taking their R&D centers elsewhere, and that is not good for the economy or the workers.

Tel Aviv Court Refuses to Endorse Out-of-Court Settlement Between Service Providers and ISPs requiring that the ISPs Block Site Offering Software for Facilitating Downloading of Copyright Protected Material

July 14, 2015

rubber stamp
ZIR”A Organization for Internet Copyright LTD, United King Film Distribution 1990 LTD, DVS Satellite Services 1998 LTD, Hot Telecommunications, Keshet Transmissions, The Noga Net LTD and Noga Telecommunications LTD sued Anonymous, Bezeq International LTD, Partner Telecommunications, 012 Smile Telecommunications LTD, 013 Netvision LTD, Hot Net Internet Services and Internet Rimon LTD.
Broadly speaking, the case is one of content providers suing Internet Service Providers, and the not identified owner of a website allowing downloading of a piece of software that enables accessing and downloading content.

The content providers sued for a temporary injunction against the service providers and for details of the surfers.

Popcorn is software that allows both streaming content for online viewing and downloading content for future viewing. The plaintiffs sought to stop this service and to require ISPs to prevent access to the website allowing downloading of the software. A temporary injunction issued on 19 May 2015. On 3 June 2015 a hearing was held and on 11 June 2015, the plaintiff announced that it had reached an agreement with 013 Netvision LTD, Hot Net Internet Services an Internet Rimon LTD.

Judge Magen Altuvia of the Tel Aviv District Court ruled that there was no place to issue a temporary injunction to block access to Internet sites that allow downloading of software programs that allows viewing of creative works for which copyright protection is alleged. Such an injunction is ineffective and damages the free flow of information, the right of the public to know, freedom of expression and provides power to Internet Service Providers to determine what may or may not flow through the Internet Conduit. Other issues are the fight of anonymity and of privacy on the internet.

In consequence of the above position, the temporary injunction requested by a website and by an Internet Service Provider to prevent the use of the Program Popcorn was denied. It appears that many Internet service providers had come to an understanding with the plaintiffs, but one held out. The one that held out was vindicated. Furthermore, the agreement reached by the plaintiffs with the other ISPs would not be ratified by the court and the temporary injunction was cancelled.

The Court ruled that by law, the court is not able to order a temporary injunction against a third party to reveal the identity of an anonymous surfer that allegedly has committed an offence. It appears that the plaintiffs themselves were tardy in requesting the injunction and this indicates that the temporary injunction is hardly significant to the plaintiffs and there is thus no justification in issuing it.

The balance of interests does not favor the plaintiffs where there is no clear legislation that allows action against Internet Service Providers. Closing down the website will not prevent the downloading and installing of Popcorn and will have no action against those Internet surfers who have already downloaded the program, and there are opposing values of free flow of information, right of the public to know, freedom of expression.

Plaintiff’s Position
On 29 June 2015, the plaintiff requested that an agreement made with Partner Telecommunications, 012 Smile Telecommunications LTD, 013 Netvision LTD, Hot Net Internet Services and Internet Rimon LTD be ratified by the court. Bezeq International held out and the plaintiffs requested a temporary injunction again them.

According to the plaintiffs, United King Film Distribution 1990 LTD, DVS Satellite Services 1998 LTD, Hot Telecommunications, Keshet Transmissions, The Noga Net LTD and Noga Telecommunications LTD held copyright in various programs and none of them had authorized Anonymous or Bezeq International to use the protected content via the Popcorn website or program.

Anonymous is not known to the plaintiffs [the ruling uses both verbs to know, i.e. conaitre and savoir, knowing in the Biblical sense does not seem to be intended]. The name Anonymous relates to the owner of the Popcorn website that allows surfers to choose to watch programs without the plaintiff’s permission, thereby infringing copyright under the Copyright Act 2007, and being guilty of unjust enrichment under the Law of Unjust Enrichment 1979.
The ISR is the bottleneck that has the cheapest and simplest way to stop access to Popcorn’s website from Israel based Internet browsers.

On 14 May 2015, and again on 17 May 2015, the plaintiffs contacted all the internet service providers but these were ignored.

On 28 April 2016, the Chancery Division of England ruled on Popcorn’s website and in that ruling, determined that the Popcorn sites infringed copyright and Internet Service Providers should block access. Twentieth Century Fox Film Corporation and Others vs. Sky UK and others. Case No: HC2014-00229, EWHC 1082 (ch). According to the plaintiffs, Judge Gidon Ginat (also of the Tel Aviv District Court) adopted the UK decision in his ruling of 12 May 2015, T.A. 11-333227-13 NMC United Entertainment LTD. Et. Al. vs. Bloomberg et al. In that instance, the Court found that by allowing conversion from view only format to saveable MP3 format, Mr Parpori had aided and abetted copyright infringement and that Internet service Providers should block access to the site. See here for my analysis of that case.

According to the plaintiffs, both the Fox decision and the Papori decision support their position that access to the Popcorn site should be blocked. Due to the ‘unacceptable ease of infringement and the fatal wounding of their rights’ there is a need to grant the requested injunctions as soon as possible to preventthe daily infringements.

Bezeq International’s Position
Bezeq International claims that the plaintiff’s filed suit following the ruling in the UK against Popcorn, despite the software being available from much earlier. Suit was filed only in May, so this case cannot be considered urgent.
Bezeq International claims that the plaintiffs do not have a single damages claim against them and therefore there is no room to grant an injunction against them. There are a number of Supreme Court precedents that prohibit issuing injunctions against third parties.

Bezeq considers that such a third party injunction would do them damage whilst would not have an effect on Popcorn since they would simply open up further sites allowing content to be downloaded.
In the appeal considering obligations of ISPs 4447/07 Rami Mor vs. Barak ITC (1994) Bezeq international, Judge Rivlin of the Supreme Court related to whether the Court had the authority to force a third-party to reveal the identity of an anonymous surfer who committed an offence.

There judge Rivlin ruled:

“My position Is that the Courts should not issues such injunctions without a proper hearing. Until there is specific legislation that that allows the requested injunction in cases of slander, there is no alternative but to inquire into whether there is a general framework that allows such third party injunctions. In other words, anonymous Internet surfing should be treated like anything else, and there has to be either specific legislation or general legislation and there is no justification to invent such a framework by judicial legislation.
In the current instance, there are three parties. There is the plaintiff who claims to have been slandered. There is the anonymous slanderer and there is the third party who may know the identity of the anonymous slanderer. This scenario of three parties is not unique to Internet slander. In other contexts, a party may consider himself damaged by an anonymous damager and may suspect that a third party may know the identity of the culprit. The question in front of us is thus wider than anonymous internet surfing. The question is whether Israel civil law allows forcing a party to identify a damager so that suit may be filed against him.

One possible source for contemplating forcing the revelation of the identity of the third party is Section 75 of the Law Courts Law 1984. Section 75 grants wide posers to the courts one the infringement is proven. It does not provide rights outside of a civil proceedings. The law does not contemplate court rulings in the air, but court rulings against parties being prosecuted.
Where A damages B, B may obtain an injunction against A. However, where A damages B, B cannot obtain an injunction against C who is not connected to A or to B. This would require special authorization. In other words, one cannot pull oneself up by one’s bootlaces and cannot create a civil matter against a third party by legislation designed to provide recourse against actual infringers.
This logic is good for Sections 71-75 of the Civil Tortes Ordinance, also considered as a possible basis for action. These Sections deal with the courts authority to provide retribution for civil damages and to give injunctions to act or to refrain from acting, but are not relevant in this instance. The injunction requested against the Internet Service Provider is not with respect to actions by the Internet provider. There are no charges for damages case against the ISP and no grounds for requesting compensation in these clauses so there is no grounds for revealing his identity.

Judge Rivlin went on to refer to another UK case, Norwich Pharmacal, where the court ruled on the revealing of an anonymous infringer in a separate proceeding:

…it should be emphasized that this principle does not have an anchor in Israel law and does not dovetail with any judicial framework recognized in Israel. The opposite is true. It contravenes the spirit and purpose of the judicial framework established by the primary and secondary legislators for Civil Court procedures. Such a change should come from the primary or secondary legislators. [i.e. the Knesset or the Ministry of Justice].

Judge Rivlin’s position was opposed by Judge Elyakim Rubinstein but was endorsed by Judge A.A. Levy.

Judge Magen Altuvia considers that the principles laid out by Judge Rivlin in the Mohr case are appropriate in this instance where the temporary injunction is identical to the main injunction and the rights of the plaintiff and defendants have not been clarified, and where there is no case against the defendant alleging infringement of the rights of any of the plaintiffs. Furthermore in the Appeal 1622/09 Google Israel vs. Brokertov et al. Judge Rivlin reiterated the position in Mohr and stated that “these differences don’t solve the issue of court authority to sanction a third party who is not guilty of any direct claims.

The Plaintiffs rests their case on the Parpori issue. From the way things developed it appears that the plaintiffs only decided to file suit after the Papori ruling on 12 May 2016. Thus only on 14 May 2015, a couple of days after Judge Ginat’s ruling, the plaintiff wrote to the ISPs (defendants 2-7) and requested that access to the Popcorn site be blocked. The law suit was only filed a week later, on 19 May 2015.

It will be appreciated that Tel Aviv District Court rulings are not binding precedents to the Tel Aviv District Court and the Court can ignore the Parpori ruling, whereas the Mohr case is binding precedent. Furthermore, without expanding, Judge Altuvia considers the Parpori scenario rather different. In this instance, there is a difficulty for the plaintiff to identify Anonymous and to prevent alternative websites being set up, so it is not clear that ordering the ISPs to block the site is efficient. Neither Parpori or the UK ruling are binding on the Tel Aviv Court. Indeed, in Mohr, the Supreme Court reviewed UK and US caselaw that allowed action against third parties such as ISPs and didn’t adopt the approach.
In Parpori, the main culprit had the opportunity to defend himself. This is not the case here as the main culprit isn’t identified.

Temporary injunctions are an exception to general procedure and are only appropriate where there is an urgency, which clearly wasn’t the case here, as the plaintiff was tardy in pressing charges.
The program Popcorn does not itself infringe. It merely aids and abets the downloading and viewing of copyright material. Blocking the site does damage to the ISP’s image and other ISPs can choose not to block access.
Clause 9 of the Statement requires the ISP to block future sites. This requires them to be a policeman and a censor for the plaintiffs. This policeman is not to generally police the net but to take action against a specific entity who has not had the opportunity to defend himself in court.

The reluctance of the court to convert ISPs into policemen outweighs the copyright of the plaintiffs.

In view of the above analysis, it would be wrong to endorse the out-of-court agreement as it is not a simple contractual obligation but has in rem aspects. The desired censorship would have consequences for the public and the Legal Counsel to the Government (Perhaps better translated as the Attorney General, has not addressed the issue, despite being invited to do so.

The temporary injunction granted by the court is voided and the plaintiffs are obliged to compensate Bezeq ben Leumi 40,000 Shekels for costs and legal fees.
Civil Action 37039-05-15 ZIR”A et al. vs. Anonymous, Bezeq Ben Leumi et al. Ruling by Magen Altuvia of Tel Aviv District Court, 1 July 2015.

With all due respect to Judge Gilad Ginat who I consider to be the most competent IP judge in the District Courts and probably in any of Israel’s Courts now that Judge Gronis has retired, I think that Judge Altuvia is correct. In my comments on Civil Ruling 33227-11-13 NMC United Entertainment LTD et al. vs. Bloomberg et al. Tel Aviv District Court by Judge Ginat, 12 May 2015 I criticized the decision as ultra-vires judicial activism. I don’t accept that there is a lacuna that the legislators forgot about, but rather the current state of the Law reflects conscious government policy, not least due to the fact that when the new copyright act being passed, Israel was regularly being criticized in the US 301 Special Report also here for not having ISPs required to police the net.

I think that Judge Altuvia is correct that this is an instance where the Attorney General should present the government’s position. I think that the Attorney General is supposed to attend to such matters. It seems that Attorney Yehuda Weinstein views things differently and believes that his job is to dictate government policy and to keep the government in line with the positions of the Supreme Court.
For example, at present there is a contentious issue to be debated by the Knesset – the Death Penalty for terrorists. I have no problem with the Knesset debating this issue from time to time. I have no problem with lawyers in private practice, clerics, academics and journalists, human rights activists, victim support groups and the lay public expressing strong opinions, whether for and against. However, I find it totally unacceptable that the Israeli press reports that the Minister of Justice is considering supporting the legislation despite the opposing views of the Attorney General. Sure the Attorney General is entitled to have opinions and to express them to the government ministers. He should do so in a discrete manner and the public and press have no business knowing his personal opinions. The government is selected by the ruling coalition that represents a majority of the members of Knesset who are elected democratically. The Attorney General is an appointee. The current proposed legislation is a private member’s bill with some support from government back-benchers. But Weinstein also speaks out on government policy. This case and many others are not legal issues, but moral, ethical, strategic and tactical ones. If Weinstein is unhappy with supporting a government policy, he should either be professional and do his job to the best of his ability, as Barak apparently did as Attorney General, or he should resign. There are a number of cases where the Attorney General seems to have dictated policy or ignored the government. This is, in my opinion, grounds for dismissing him.

I am very critical of judicial activism, which seems to be justified to protect democracy from the people’s representatives. Thankfully Justice Aharon Barak’s term as president of the Supreme Court has ended and some of the damage to fidelity of the Law and to the democratic process has been reversed. I am pleased that Judge Magen Altuvia and Judge Rivlin have seen fit to take a formalistic stance in this instance.

As to judicial legislation for enhancing enforcement of IP infringement, the Supreme Court has accepted contributory infringement and aiding and abetting infringement in schori vs. Regba (Apppeal to Israel Supreme Court 7614/96) and in the Rav Bareach (Appeal to Israel Supreme Court 1636/98) Crook Lock case.  In the US, the CFAC and the Supreme Court have moved away from these judicially created indirect torts. Arguably both cases are legitimate workarounds. We’ve seen the courts moving away from A.Sh.I.R. which provided legal grounds for sanctions for unregistered designs under the amorphous value of Unjust Enrichment. In absence of amendments to the Patent Law, perhaps it is about time that Srori vs. Regba and Rav Bareakh were reversed?

In the last election I did look for a party with a strong IP position. Unfortunately, it was difficult to find a party with a clear stated position on anything, and none seemed to mention intellectual property in their manifestos, bumper stickers TV commercials. The Knesset is, nevertheless, updating its IP laws. I think we should lobby them to do more rather than give the courts legislative powers. Whilst there are ministers without portfolios, maybe there is room to have an IP Minister or Czar, or a Deputy Minister in the Ministry of Justice or that of Trade and Industry with specific IP responsibilities. Other countries, including the US and the UK have such a position.

One final point, Internet Rimon advertises itself as a religious ISP that blocks pornography, gambling and other websites deemed immoral, objectable under Jewish law and values and damaging. I believe such a pious company should take copyright infringement seriously and block sites such as Popcorn as well, or at least provide the option to parents to elect to block copyright infringing sites.


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