Ultraband – Use it or lose it

March 4, 2014

ultraband

Trademarks are fundamentally different from patents and copyright.

An invention becomes ‘property’ or a ‘tradable asset’ only if a patent  application is filed in a timely manner and if an examiner is convinced that it meets statutory  requirements. It has to be  a method or device that is novel, useful and non-obvious. The patent issuing creates a rebuttable assumption that the invention is all these things. The patent is limited in geographic scope and in time.

Copyright is a form of protection for creative works such as plays, literature, films, music and the like. The act of creation creates the ownership. It does not require registration. the protection is for extraordinarily long periods of time, such as life of author + 50 years, or in some places and cases life + 95 years.  Not just great works of creativity, but more or less anything, including this blog post, for example, is automatically copyright protected, more or less worldwide.

Trademarks are a different sort of thing. In many common law jurisdictions one obtains rights by simply using a unique name or logo for branding purposes. Registration makes enforcement easier and in many cases makes it possible to claim damages. One has to use the mark. Registration alone is insufficient.  In the US, one really needs actual use to be able to register a mark. In other jurisdictions, intent is adequate.

Israel Trademark No.  1987840 for  “Ultraband” was registered by Vyyo, a company whose strange name comes from the garbage that is shown when computer code is corrupted.

PeerApp LTD filed a cancellation request with the patent office arguing that the mark was not in use. Since the mark owners failed to show actual use the Deputy Commissioner of Patents and Trademarks struck the mark from the register. She is correct. Trademarks are not speculative investments, but a means of identifying sources of goods or services. If a mark is not in use, it should be available for others.

Since the cancelation proceedings went smoothly, no costs were awarded.


Hillel House Hosting BDS Event – trademark implications

February 23, 2014

Hillel's sandwichHillel

Last Friday’s Jerusalem Post had an article concerning a Hillel House hosting a speaker calling for boycotting Israeli goods and divesting, due to the plight of the Palestinians.

Essentially, Swarthmore College’s Hillel House passed a policy stating that they would allow and sponsor any and all organizations and people be they “Zionist, anti-Zionist, post-Zionist, or non-Zionist”. See here. They now intend inviting a speaker who is calling on BDS – boycotting, Divesting and calling on sanctions against Israel because of the Palestinian Issue.

Hillel International has called on Swarthmore College’s Hillel House not to host the event under the auspices of Hillel.

Obviously the issue raises questions of freedom of speech, Antisemitism, anti-Zionism and racism.  It occurred to me that there are also trademark issues involved. A quick look at the USPTO trademark register shows that B’nai B’rith DBA B’nai B’rith International CORPORATION D.C. 2020 K Street, N.W. 7th Floor Washington D.C. 20006 has a trademark for Hillel. See here. (There is also a delightful trademark registration for Hillel’s Angels, for an Association of Motorcyclists, primarily of the Jewish faith that was filed by Wyckoff/Franklin Lakes Synagogue of NEW JERSEY, which has unfortunately, been allowed to lapse).

If Swarthmore College’s Hillel House is affiliated to B’nai B’rith International, presumably the umbrella organization can define what type of events and speakers are kosher.

Hillel International’s policy states:

Hillel will not partner with, house, or host organizations, groups, or speakers that as a matter of policy or practice: 
• Deny the right of Israel to exist as a Jewish and democratic state with secure and recognized borders; 
• Delegitimize, demonize, or apply a double standard to Israel;
• Support boycott of, divestment from, or sanctions against the State of Israel; or 
• Exhibit a pattern of disruptive behavior toward campus events or guest speakers or foster an atmosphere of incivility.

Presumably Hillel International can force Swarthmore College’s Hillel House to abide by the policy or not to use the name Hillel.

Compared to friends at City University, South Bank Poly (University of Greenwich) and elsewhere, I was fortunate to do my undergraduate studies at Imperial College, then a relatively non-political campus. We did have some trouble with the Just Peace in The Middle East Society, the Socialist Workers, and others, but mostly things were calm. In my first year, I ran for the post of religious affairs officer of the Student Union, and, in addition to the Jewish Society, garnered support from the Christian, Moslems and atheist (Huxley) societies, although lost to a candidate supported by the political societies, the largest of which, ConSoc, was the Conservative Society.

Students tend to be political animals, generally irresponsible and immature. I certainly got up to a couple of stunts that with the benefit of hindsight, would consider irresponsible.

I see Swarthmore Hillel’s position as fairly reprehensible.   Since Israel is anyway engaging with the Palestinian leadership, the timing of this is also unfortunate. A Hillel House should try to cater to the Jewish student mainstream. It should be inclusive. I think food should be Kosher. There should be a mehitza for prayers, but it should be minimalist. Let everyone be made welcome. I don’t think that a Hillel House should invite a disciple of Meir Kahanne or a Far Left speaker. I do think that a calm and reasoned debate on settlement and security, democracy and Palestinian self-determination is valuable, but note that it doesn’t happen in Israel, so why should it happen in the US? In general, I think that there are more than enough non-Jewish organizations that are vehemently anti-Israel, without Jewish student organizations joining the bandwagon. 

If any students of Swarthmore College (or any Jewish students studying anywhere) are interested in seeing a West Bank settlement and talking to the residents, I’d be happy to host them.


Cialis Again – District Court Rules that Only Parties to an Opposition have Standing to Appeal the Decision

February 10, 2014

assume a spherical cow

Lilly Icos produce a drug called Tedalafil, which is used to treat male impotence due to erectile dysfunction. The drug, is marketed as Cialis. When their patent application number IL 146742 covering the drug was allowed, TEVA opposed the patent issuing. After cross examination of expert witnesses but before final summaries were submitted, a commercial arrangement between Lilly Icos and Teva resulted in the opposition being dropped. However, then Deputy Commissioner, Noah Shalev Smylovezh ruled that the ‘inventive step’ on which the patent had been allowed was that fine grinding increased the solubility of the active ingredient. He ruled that this was obvious, and so, under authority of Section 34 of the Israel Patent Law, he rejected the patent anyway. This decision of his is correct. Dissolution is a surface effect and for a given mass of material, the more finely ground, the larger the surface area to volume ratio.

Expressed mathematically:

Assume spherical particles:

For a given mass M, the number of  particles n =  M / (4/3πr^3)

The surface area A of each sphere is 4πr^2

Thus the total surface area A = n 4πr^2 = 3M/r

As r shrinks, the surface area increases.

Since perfect spheres have the lowest surface area to volume ratio of any solid (which is why soap bubbles are spherical), for any other shape, the surface area increases even faster as the dimensions decrease.

The standard of obviousness for patentability in Israel is ‘obvious to try’ – see Fosamax decision by Dr Meir Noam, which was upheld by Israel Supreme Court.

Section 30 is there to prevent patents issuing that shouldn’t. This is a patent that then Deputy Commissioner, Noah Shalev Smylovezh had concluded lacked inventive step, and so  under Section 34 he refused the patent, thus ensuring the integrity of the register, allowing generic competition and allowing impotent men and their partners to benefit from cheaper erections.

An earlier posting on Noah Shalev Smylovezh’ decision may be found here.

The applicants requested further clarification, but Deputy Commissioner Noah Shalev Smylovezh’s contract as Deputy Commissioner had ended and he had returned to private practice. Ms Yaara Shoshani, an adjudicator at the Israel Patent Office took over his open files. She clarified the decision but gave the parties 30 days to respond. After reviewing their submissions, she decided not to use her powers under Section 34 of the Law, and to allow the patent to issue. Her reasoning, which overturns Dr Noam’s ruling regarding obvious to try is found here. Essentially she replaces the ‘obvious to try’ standard, with a ‘not necessarily the first thing one would try’ standard.

Unipharm appealed this decision to the Jerusalem District Court, where Judge Ben-Zion Greenberger heard the case.

Unipharm claimed that there was a chain of events that had resulted in a miscarriage of justice and requested that the Jerusalem District Court rehear the case. They claimed that the onus was on the applicant to prove that they deserved a patent and merely because the opposition was dropped, the basic requirement of a non-obvious inventive step remained missing.

Instead of addressing this issue, agent for patentee argued that Unipharm lacked standing since they were not a party to the opposition and therefore the case should be thrown out under Section 421 of the Civil Procedure Law and / or regulations 101 and 102. Unipharm countered that under the Patent Law, 174(a) anyone who sees himself hurt by a patent office decision has the right of appeal.

The Court ruled that before addressing the substantive patentability issue, it should address the issue of standing and relate to the correct interpretations of Sections 30, 34 and 174(a) of the Israel Patent Law and Section 421 of the Civil Procedure Law and / or regulations 101 and 102.  On this point, it ruled not to allow Unipharm standing, and so the patent remained valid and the decision of the Ms Yaar Shoshani Caspi, overturning Deputy Commissioner Smylovezh’ ruling was not addressed.

COMMENTS

This is an unsatisfactory state of affairs. The reason why the Commissioner (or his delegate) has authority under Section 34 is so that in cases where the parties do a deal and an opposition is withdrawn, but the person hearing the case believes that there are grounds for invalidating the patent, the patent office is supposed to continue in the hearing in-partes and rule on validity on the merits.

Ms Shoshani Caspi’s position disagrees with Dr Noam’s standard of obvious – obvious to try. It also overturns Noah Shalev Smylovezh’ conclusions. Unipharm should have filed an opposition, but missed the deadline. Nevertheless, Judge Ben-Zion Greenberger’ws ruling that Unipharm has no standing means that he is avoiding judicial oversight of this decision and doing so on a technicality.

The arguments put forwards by both parties had the usual dose of ‘smoke and mirrors’. The Judge quoted Barak and claimed to be doing an analysis of what the purpose of the Law was, and decided that the correct balance between patentee and opposers and rest of the public was to allow the opposers to appeal, but not third parties.

There is some logic in interpreting patent law in light of standard civil court procedures. But, clearly all generic manufacturers and importers are affected by this decision, whether or not they were a party to the opposition. indeed, the public – at least the male impotent members subsection of the public – is served by preventing monopolistic pricing on the drug in question. It therefore seems to me that the Court of Appeal should address the issues of patentability, specifically the issue of obviousness on its merit.

Maybe a user of Cialis should have filed the case, perhaps as a class action? Perhaps the way forward is for Unipharm to file cancellation proceedings and to make sure that the issue of inventive step is considered on its merits. Alternatively, they can appeal this decision to the Supreme Court.

We note that in a recent decision the Supreme Court ruled that when hearing an appeal of an opposition ruling, the district court can even hear new evidence if appropriate. In that decision, which also challenged a strange Israel Patent Office decision, the Supreme Court ruled that appeals of Patent Office decisions are different from regular appeals of court decisions and an appeal may, if warranted, be a new trial with new evidence. I think that in the present case, it is likely that the Supreme Court would refer the case back to the District Court to consider on its merits. If that happens, I believe the ruling should be reversed.


Drop in Patent Filings into Israel

February 5, 2014

stats

The Israel Patent Office has just published official figures for 2013.

Some 6185 patent applications were filed in 2013, of which 5,294 were Paris Convention or PCT National Phase Filings, and the remaining 891 were first filings. I’ve compared these figures to those in the 2012 Israel Patent Office Report and it would appear that these are the lowest figures for a decade.

The obvious things that have changed are that the Israel Patent Office put its fees up 40% past year and the Shekel is very strong against foreign currencies.

It seems though, that Israeli inventors are also thin on the ground or first filing elsewhere. Since the America Invents Act I think US provisional applications are less attractive. It could be, however, that with more Israel patent firms filing direct into the US and the low dollar, coupled with the draconian raise in Israel Patent Office filing, extension and issue fees, that the these are being scared off as well.

The Israel Patent Office has to find salaries for the 100 examiners it employs as a prerequisite to obtaining International Search Authority Status. We further note that the number of new practitioners is increasing, so it seems that there is less patent work to go around.

It could be that there is significant drafting going on for Israeli clients. However, they are not filing in Israel. Apparently the number of PCT applications filed with the Israel Patent Office in 2012 was 1199 which is an 11.4% increase compared to the 1062 filed last year. There were also at least 192 further PCT applications filed in Geneva that requested that the Israel Patent Office conducts the International Search.

Of course the Israel Patent Office has put a positive spin on things. The report notes a drop in patent pendency times. Well, with less work coming in and more hands to do it, what does one expect? 

1360 design applications were filed in 2013, which is a 12% drop from 1546 last year, and is similar to the 1362 applications filed in 2002 and 1369 applications filed in 2003, but lower than any year in the past decade which peaked at 1775 in 2008.

It is not all doom and gloom though. There was a 10% increase in trademark filings into Israel, with 8733 marks filed in 2012 and 9578 filed in 2013.


Israel Supreme Court Upholds Ruling of Non-infringement of Breaking & Entering Patent, but does not Invalidate it

January 14, 2014

breaking and entering

In 1998, Ofer, Extinguishing, Extracting and Saving LTD supplied hydraulic systems for breaking into looked buildings manufactured by Holmatro to the Israel Ministry of Defense, where they were deployed by the armed forces for use in urban warfare. Further systems were sold in 1999 and 2000.

From 2000 to 2006, the Israel Ministry of Defense ceased to order from Holmatro and purchased systems from Hydro-Na LTD.

In 2007, needing to purchase 562 such systems, the Israel Ministry of Defense issued a tender in which Hydro-Na submitted a bid. However, in November 2011, the Israel Ministry of Defense announced that they would purchase future systems from Sun Hitech.

Hydro-Na filed Israel Patent Number 184211 on 25 June 2007 and it issued on 4 May 2009.

The first claim of Hydro-Na’s patent is as follows:

A system for forcible opening of an entryway by applying pressure to adjacent boundary surfaces, said system comprising:

  • a hydraulically operated pump unit for providing pressure to the system;
  • a hydraulic cylinder unit comprising a piston rod
  • a first anvil comprising a narrow wedge-shaped portion removably and rotatably mounted on the proximal end of said piston rod, said first anvil formed with downwardly facing friction gripping grooves on its surface; and
  • a second anvil comprising a pair of narrow, spaced-apart wedge-shaped prongs formed on the sides of a rotatable ring removably mounted on said hydraulic cylinder until, said second anvil formed with upwardly facing friction griping grooves on its surface;

Such that when the wedge-shaped portion of said first anvil is seated between the wedge shaped prongs of the second anvil so as to be aligned therewith and said first and second anvils are forcibly inserted in a seam between adjacent entryway boundary surfaces, operation of the pump unit applies pressure via the first anvil on a first adjacent boundary surface while said second anvil applies a contrary gripping counterforce on a second adjacent boundary surface, forcibly opening said entryway of said adjacent boundary surface.

There is a second independent claim and also a method claim, but the above claim illustrates the invention fairly well.

Hydro-Na also filed three Israel design applications for various sub-components.

Hydro Na tried unsuccessfully to obtain an injunction against Sun HiTech and to have their bid in the tender thrown out on various grounds as not fulfilling the tender requirements. The injunction was refused and the tender bid was upheld.

On allowance of the patent in May 2009 after accelerated examination, Hydro-Na sued Sun Hitech LTD, its shareholders and the Israel Defense Ministry for patent infringement and claimed 3,376,940 NIS (about a million dollars) in damages, filed for recall of the systems, and for a temporary injunction. The grounds were patent infringement, unjust enrichment, passing off, etc.

Judge Zerankin of the Haifa District Court ruled (T.A. 34912-11-09) that the patent was probably invalid since there were earlier systems known to Hydro-Na that were not disclosed to the patent office during prosecution, but noted that the rotatable ring was apparently novel and arguably inventive. He did not invalidate the patent, but found that there was no infringement since Sun HiTech’s system did not include this novel feature.

As to the designs, the Judge Zerankin ruled that the mechanical components weren’t designs in the meaning of Section 2 of the Patent and Design Ordinance.

Hydro-Na appealed to the Israel Supreme Court.

On appeal, Judge Amit noted that most of the issues were factual and had been examined by the Court of First Instance and appeals were not to retry evidence but only legal analysis.

In cases like this where the defense of the defendant is invalidity of the patent, the plaintiff has only to show infringement, since the rebuttable assumption is that the patent is valid and the defendant has to prove that this is not the case.

The expert witness for Sun Tech LTD, patent attorney Dr Goldreich, showed that there were a large amount of prior art, none of which was brought before the patent office.

Attorney Ed Langer appeared as expert witness for Hdro-Na, but since he wrote the patent and could not provide adequate justification for not relating to prior art, his testimony was found unreliable.

Judge Amit considered the Court of First Instance had been overly cautious in not canceling the patent in question, both on its merits and when considering the issue of equitable behavior with regards to the legal requirement of disclosing the prior art. He assumed that they not only withheld information from the court but also from their patent attorney. Nevertheless, he noted that he wasn’t required to relate to the validity of the patent since it could be shown that it wasn’t infringed.

As to various other claims by Hydro-Na, Judge Amit quoted Ecclesiastes (Koheleth) 7:14 ” It is good that you should take hold of this, and from that withhold not your hand, for the one who fears God shall come out from both of them.” Essentially, he dismissed them as “also ran”.

In conclusion, Judge Amit accepted the earlier court’s finding that ‘cold’ door forcing systems were on the market long before Hydro-Na’s application was filed. To the extent that Hydro-Na deserved a patent, it was for the rotatable ring which was not found in the competing system that won the tender. He noted that Hydro-Na failed to file abroad despite a market potential of NIS 150-225 Million Shekels and deduced that they were well aware that their patent was extremely narrow and easily invented around.

The appeal was unanimously rejected by a triumvirate of the Supreme Court consisting of Judge Amit (who wrote the appeal) and Judges Melzer and Solberg who affirmed his ruling.

Costs of NIS 50,000 were awarded to the Sun Hitech LTD and a similar sum to the Israel Ministry of Defense.

Civil Appeal: 7623/10 Hydro–Na et al. vs. Sun Hitech et al., 12 January 2014

COMMENT

The District Court applied the Gillette Test by declaring that the patent wasn’t restricted to the rotatable ring, it would not have issued.

The Supreme Court did a marvelous job citing the various sections of the Law and analyzing them. It was a little pedestrian and boring, so I haven’t reproduce in full.

I believe that the failure to disclose the prior art should have invalidated the patent and consider both Haifa Court and Supreme Court as being overly cautious in not doing so. What is the point of having a duty of disclosure if, on proof that the applicant withheld information, the court doesn’t invalidate the patent?

Whether or not Dr Goldreich was correct in her analysis that the rotatable ring wasn’t sufficient to be considered inventive, I wonder if there isn’t room for a procedure for referring a patent back to the patent office for reconsideration in view of additional prior art?

As to the registered designs, if Hydro-Na had sold them to the Israel Ministry of Defense prior to registering, they are invalid. Similarly if the same design is used by others. I haven’t read the original decision by Judge Zerankin but it seems that he considers such devices as inherently not-registerable, however, I think this understanding is incorrect. It is a shame that the Supreme Court hasn’t really addressed this issue, as although the Israel Patent Office has established practices regarding registering functional elements, there seems to be little binding legal precedent on this issue.

Finally,  is it ethical for attorneys-at-law or patent attorneys that drafted and prosecute a patent give a validity opinion? Is there attorney-client privilege and is it considered waived when client calls on the attorney as an expert witness? It would have been nice if the Surpreme Court had taken this opportunity to provide guidance to patent attorneys in this matter.


Israel and Korea launch a Pilot Patent Prosecution Highway

December 30, 2013

israel korea relations

The Israeli and Korean Patent Offices have launched a Pilot Patent Prosecution Highway (P-PPH) under which the result of an examination in one of the jurisdictions if it is the office of first filing, may be used to fast track the application in the other.

There are two variations, the regular one is the PCT-PPH under which one office serving as an International Search Authority ISA and/or International Preliminary Examination Authority IPEA, and issuing an International Prelinary Examination Report IPER that is at least partially favorable, by having at least one allowable claim, may be used to fast track examination in the other jurisdiction.

The other variation is called the A PPH – MOTTANAI – where the A may be an indefinite object without antecedent. I have no idea what the MOTTANAI bit stands for.

Under the PPH – MOTTANAI, an application whose claims have been determined patentable in the Office of Earlier Examination (OEE) is eligible to go through an accelerated examination in the Office of Later Examination (OLE), upon an applicant’s request.

COMMENT

I am not sure if all these acronyms are helpful, but imagine that the fast tracking itself may be useful. At least in the electronic materials field, I’ve found the Korean Patent Office very efficient.

I see these international agreements are generally good for Israel politically. Israel and (South) Korea have a lot in common. Whether or not the PPHs (don’t try to pronounce that) will result in more filings in the two countries, it is too early to say. 

The PPHs  are provisional. If there are too many cases fast tracked under the system, the patent offices reserve the right to reconsider. This makes sense. It is a little like queuing with everyone else in the under 10 items, pensioners and handicapped line to the express check-out in the supermarket. One knows how to get into the fast line, but whether or not it is sensible to do so, is another issue entirely.


Oramed Receives European Patent for Oral Delivery of Insulin

November 20, 2013

Oramed

Oramed is an Israel company that is doing clinical trials for orally delivered insulin. This is a holy grail for diabetes sufferers who currently have to have regular injections which is unpleasant and can cause infection. For hemophiliacs with diabetes, injections are obviously particularly problematic.

Oramed has now received a European patent for their invention. See here. The patent in question was drafted by Dr Moshe Tritel who unfortunately for me, stayed with JMB, Davis Ben-David, when JMB Factor & Co. disbanded a couple of years ago. Oramed, of course, stayed with Dr Tritel.

Testing for insulin still requires pricking one’s thumb and extracting a drop of blood. One of my Israel clients, AD Integrity, has developed a non-invasive way of monitoring glucose content in blood.

These Israeli inventions are set to revolutionize the lives of the growing number of diabetes sufferers.


AIPPI – Part II

November 17, 2013

aippi israel

After lunch on Day One of the Israel AIPPI conference, I attended a session directed to IP professionals that discussed enforcement of IP rights in US, Europe, Asia and Israel.

judge benyamini

The Honorable Judge Amiram Binyamini spoke first, and addressed the inefficiencies of separately hearing requests for injunctions,  the validity of the patent in question, whether there is, indeed infringement and what the damages should be. Judge Binyamini criticized the Israel Supreme Court guidelines which hold the presumption of validity, and expressed a preference to get a basic handle on all the issues, even if perfunctorily, at the first hearing, so that, on occasion, he could provide an indication to the parties as to which way the wind is blowing, so that they would be encouraged to come to an out-of-court settlement or to drop the case altogether. He was particularly critical of bifurcated and trifurcated proceedings where different forums heard different aspects of the case, such as the patent office considering validity and the court, infringement. the talk was interesting and thought provoking, if a little heavy after a substantial lunch.

The judge quoted Lord Esher, Ungar v Sugg: 

““… that a man had better have his patent infringed, or have anything happen to him in this world, short of losing all his family by influenza, than have a dispute about a patent”.

Trevor Cook

Mr Trevor Cook from Bird & Bird spoke about the the new European Unitary Patent and the Unified Patent Court. His British accent and style of delivery are similar to those of Richard Attenborough and I found myself day dreaming about the new European unitary patent snuffling its way through the undergrowth.

Mr Pravin Anand gave a very good presentation on recent trends in Indian law. He really put the recent pharmaceutical patent litigation in India into perspective but noting when pharmaceuticals became patentable subject matter under Indian law. Despite the obvious differences in size between the Indian and Israeli populations, it seems that in this area, there is a strong common interest. Mr David Hashmall of Goodwin and Proctor then spoke about the rocket docket and forum shopping in the US, including proceedings at the ITC. Material I had heard before, but well presented.

Professor Phillips attended the same session, and his report may be found here.

Whilst the above session was taking place, there was a seminar in claim construction and patentable subject matter, featuring Edward D Manzo of Husach Blackwell discussing claim construction around the world and the America Invents Act, Matthieu de Rooij offering advice on patent drafting for prosecution in Europe, Deputy Commissioner Jacqueline Bracha discussing Israel Patent Office Guidelines to provide clarity, and Dr  Cynthia Webb discussing patentable and non-patentable subject matter. 

big bucks

After a tea break, I attended a very enjoyable session on Business and Taxation Aspects of IP. John Fisher, an accountant at Somekh Chaikin, who had apparently gone to the same high school as me, albeit a few years earlier, gave a very entertaining lecture with excellent slides. The main point was that after realizing that Starbucks had made some 3 billion quid in the UK but had paid a mere 6.5 million in corporate taxes, the British govt. understood that by paying royalties for use of trademarks and the like to a Dutch holding company, Starbucks were avoiding taxes in a legal but immoral manner. The issue was brought to the attention of the G6, who are working with other leading economies to close this loophole and to ensure that corporate tax will be paid where the work is done.

Ms Nava Swersky Sofer spoke about commercialization and suggested that instead of start ups, an alternative method of monetizing might be to interest an existing company to take on a project and develop it in house, since few start ups around a single project made the transition into viable companies, which generally needed a range of projects. Unfortunately, she didn’t address the issue of how the entrepreneur was supposed to interest an existing company in this manner.

Yuval Horn noted that the Israel govt. was getting aggressive in going after successful patentees where it believed that the patent was a service invention. He also discussed the royalties due to the govt. where loans were taken from Chief Scientist to provide initial funding.

Whilst I was learning about taxation, Professor Jeremy Phillips was learning about Israel trademarks. See here. Judge Michal Agmon-Gonnen of the Tel Aviv District Court) was true to form, by suggesting that, considering the “NP” part of the conference title, we’ve given too much profit to the trade mark owner.  Once upon a time there was just confusion doctrine, then came unfair competition and ultimately dilution — “which has nothing to do with consumers whatsoever”. She apparently cited her controversial ruling regarding four-striped trainers that were not likely to be confused with Adidas’ three striped shoes, which, has since been overturned by the Supreme Court. I gave Professor Phillips a ride back to Jerusalem the following day, and I understood that he found Ms Agmon-Gonnen’s views intellectually stimulating, but out of sync with general trademark practice. I noted her other ground-breaking IP decisions that have since been overturned…

This event was followed by the Gala Dinner. The food was truly superb and Kosher! Yes, I know that that is no big deal for an IP conference in Israel. It is, however, a big deal for AIPPI conferences. At AIPPI Paris, I was a guest of honour, but they still couldn’t arrange Kosher food for me at the Gala Dinner.

This is the menu:

Roasted St Peter’s fish fillet, fettucine, green vegetables and Pesto

Chicken Breast filled with onion jam and almonds, chicken liver and delicate chili sauce, saffron rice

Phyllo (cigar) filled with caramelized apples, poppy seed ice cream, hazelnut praline cream.

Wine: White wine: Fusion, Merom Galil Segal’s semi dry 2012

Red wine:  Fusion Merom Galil Segal’s 2011.

Everything was cooked to perfection, displayed beautifully and seved professionally. The white wine was not too sophisticated, but very drinkable. Particularly for someone like me who is not too sophisticated.

rader rocking

Judge Rader sang a repertoire of rock hits, including He saw her standing there, I’m a believer and a number of Rolling Stones hits. Ms Suzanne Erez, who was on my table, noted that it was odd that the Stones which were considered so rebellious at the time, were now so main stream that their songs could be sung by a Federal Circuit judge at an IP conference. I wouldn’t have thought Suzanne was old enough to remember Mick Jagger in his rebel days.

A couple of Israel Practitioners asked me who the singer was, and when I answered Judge Randall Rader, the response was “who?”. the first couple of songs were fun, but after that, I thought that he was mostly entertaining himself rather than the audience. It was tempting to take the mike and invite everyone to the X-Factor, giving all my colleagues an opportunity to take part in what could have been a fun karaoke evening, a la Ally McBeal.

Ally Mcbeal2     x factor. 2jpg  

I did ask Judge Binyamini, Commissioner Kling and President Tal Band if they were interested in performing, but one claimed to have lost his voice, and the others said that they weren’t singers. I am sure that some IP practioners in Israel have hidden talents – even those whose IP talents sometimes seem, well, hidden. I do stand up comedy magic and could, I think, have netertained with some patented inventions. There are patent attorneys who sing.

Maybe one of the half dozen patent attorneys with rabbinic ordination, could have said grace?

Marshall phelps

Dr Ilan Cohen then introduced the eminent guest speaker, Marshall Phelps, former IP Counsel to IBM, Microsoft and others. Marshall mapped the various smart phone wars and tried to put them into perspective, looking at other breakthrough technologies, such as the dawn of the aviation industry, sewing machines, telecommunications, and the like. he explained why the US had forced Bell and IBM to license their patents in the 50s, explaining that they were concerned that Japan would be invaded by China, and were trying to protect democracy and capitalism from communist forces.  Marshall had a couple of important insights. He felt that the real defendant in the various cases was Google. Essentially, Apple was pricing its products to try to recoup the investment in their operating system whereas Google was giving Android away for free. He noted that Samsung was Apple’s biggest customer and that the patent litigation really only served the lawyers. He was confident that eventually, everyone would cross-license all the patents. He could not understand why China, who could access the Android platform like everyone else, and was anyway, making the i-phones for Apple, hadn’t yet come out with their own smart phone.

troll

On the topic of trolls, Marshall noted that awarding damages to the winner, including the successful defendant, would be a good way to address excesses by nonpracticing entities. He felt that it was only when the NPEs went after small businesses that the US government felt a need to get involved. He mentioned that many companies tried to monetize patents they weren’t using by licensing them. He stated categorically that noone would call IBM a troll. I found this last comment rather amusing, as on his previous trip to Israel, that is EXACTLY what Marshall Phelps, then with IBM, called the company. I pointed this out to him, and he grinned wickedly and said that he was sure everyone would have forgotted, but more seriously, that it depends on the audience – i.e. he’d expect that patent attorneys would realize that the non-practicing entities like tech transfers, companies like IBM, etc. could legitimately capitalize on their inventions.

Whilst those syaing locally, went on  pub-crawl, I had a lift home with Yehuda Zeruya, a Gibraltarian who introduced me to Patent Law, that is doubly aristocratic being British and Pure Serfardic at the same time.


Israel Supreme Court Mediates a Settlement between Authors on Plagiarism, But leaves the Law Unclear

November 11, 2013

Naomi Ragen

In a strange development concerning copyright law, on hearing an Appeal to the Israel Supreme Court, rather than ruling on the matter, the honorable triumvirate of judges who heard the case, engineered a compromise between the parties, Ms naomi Ragen and Ms Sarah Shapira,  under which the decision states that:

(1) the District Court ruling is passé

(2) the Apellant, Ms Naomi Ragen, agrees to uphold the requirement of the Court of First Instance, and remove a couple of pages from her novel Tamar’s Sacrifice, that the defendant of this appeal (and the original plaintiff) Ms Sarah Shapiro, alleged were plagiarized from her earlier novel.

(3) Of the NIS 233,000 original damages and legal fees awarded to her, Ms Shapiro was required to donate NIS 97,000 of either Yad Sarah – a philanthropic organization that lends out medical equipment such as crutches, wheelchairs, baby cots, breast pumps for nursing mothers and the like, or to Yad Aliezer, which provides food relief and runs soup kitchens to the poor.

(4) This brings all outstanding issues to a close.

Appeal 4958/12  Ruling 6 November 2013, Ragen vs. Sphapiro, Judge Chayet and two others.

COMMENTS

Ms Shapira and Ms Ragen have both been busy publishing press releases to the effect that they have been vindicated, and so the Honorable Supreme Court have increased peace and happiness in the world, following in the footsteps of Aharon the Peace Maker.

My problem is that this is what mediation and maybe arbitration is for. In my opinion, the Supreme Court’s job is to follow in the footsteps of Moses and is supposed to teach and clarify the Law.

Facts

The evidence here is clear. There are 2 or 3 pages of dialogue in a thousand page novel that bear some similarity to dialogue in an earlier author’s novel. The second author certainly had read the earlier author’s novel. There is no evidence of intentional copying. There are also some other similarities, such as a house-keeper character in both books.

My Legal Analysis

I don’t think that there is a substantive portion of the earlier book that was copied, nor do I think that the section in question is a substantial element of the later book. By substantial I include both quantitative and qualitative. In my understanding, there is fair use. Possibly, there is plagiarism that may be intentional or unintentional, but there is no copyright infringement. I don’t believe that the sections contributed to the success of the second book and so do not see anything that can be considered Unjust Enrichment

My legal analysis above, has not changed since I criticized the original decision by Shapira, who also got design and trademark law wrong.  Now Ms Ragen is critical of certain aspects of the Hareidi (Ultra Orthodox) lifestyle. In particular, she was critical of attempts to have women sit at the back of the bus and demeaning to women. Together with other co-plaintiffs, she appealed this to the Supreme Court sitting as a Court of Justice, and won. Several of her novels criticize certain Hassidic and Hareidi excesses and so certain circles have had a field day with this case. Ironically, these revelers have been known to ignore the finer points of IP and find it difficult to come to terms with copyright infringement being a crime and a sin, since it is not discussed in the classical religious sources that predate printing in Europe. After earlier posts on this topic, I have been criticized for backing such a worthless sinner.

I do not feel vindicated by this ‘decision’. I also don’t feel corrected by it. I don’t see that there is a decision at all. I find this unsatisfactory. I want the Supreme Court to clarify matters of Law that are brought to it on appeal.

Judge Schapira who presided over the  the Court of First Instance is now the State Comptroller. Perhaps out of deference to him, the Judges refrained from overturning his decision. I don’t think that this is a valid reason.

In a trademark case a couple of years ago, see here, I witnessed similar behaviour of the Israel Supreme Court judges who forced a compromise instead of issuing a ruling. In fairness, over the past couple of millennia, Rabbinic Courts acted in this manner, so there is a tradition for it. Nevertheless, I want the Supreme Court of Appeals to Clarify the Law. They have failed to do so.

I don’t think that the judges have exonerated Ragen from plagiarism or affirmed Shapiro’s allegations that there was anything more than fair use. All very unsatisfactory.

Furthermore, readers of this blog will note that on occasion I have criticized copyright decisions of District Court judges as being wrong. On occasion, embarrassingly so. I have also advocated specialist IP courts or at least IP judges. Anyone is entitled to challenge my analysis of this case or of any other. My opinions are not binding on anyone. However, Supreme Court decisions are binding. The Supreme Court should hear and rule on IP cases brought before it to guide the District Court judges. That is the primary function of Supreme Court judges. Their failing to use this case to issue clear guidelines makes a mockery of the system.


Should an Initiator of Cancellation Proceedings be Required to Deposit Potential Costs Before a Hearing?

November 7, 2013

bar 9beach 9

Itay Sachir filed and received the two trademarks shown above for  cafes, pubs, restaurants and provision of food and drink services, all included in class 43.

Roi Leon instituted cancellation proceedings, and Mr Sachir requested that these be struck from the record unless Mr Leon posted a deposit of at least NIS 100,000 for covering legal fees in the event that the cancellation proceedings failed. The basis for this request was that there are outstanding costs of Nis 6500 from an earlier ruling that remained unpaid, and that in the response, Mr Leon gave an incomplete address and therefore should be considered as a plaintiff with no fixed abode to send the bailiffs to, should he lose the case and default on payment.

Mr Leon responded that the court records included his full address, that the outstanding debts were irrelevant and that depositing a bond was appropriate in only extenuating circumstances which did not apply here. Furthermore, he was confident that he would win anyway.

RULING

The Adjudicator of Intellectual Property, Ms Yaara Shoshana-Caspi ruled that the Israel Patent and Trademark Office sees itself authorized to order a deposit for paying costs. In this case, since the plaintiff is a private individual, regulation 519 of the Civil Proceedings Ordinance applies. The patent office certainly has discretion, but the law does not indicate what facts should be taken into account when deciding whether or not to order such costs. Nevertheless, access to the courts is a basic right, and requiring high deposits to be made adversely affects those rights, even if from time to time, costs will  not be made, or if plaintiffs do not have the financial wherewithal to pay legal costs.

That said, the mark holder also has rights. The applicant for cancellation has already lost twice before the patent office, resulting in costs of NIS 6500 being awarded against him. These include an attempt to register a trademark, and, when this failed, an attempt to revive the application. Since the applicant for cancellation is not financially challenged, but is simply ignoring  the patent office’s order to pay NIS 6500, the patent office takes the position that should he lose, the mark owner will indeed have trouble collecting.

Regardless of the strength of the applicant for cancellation’s case, the mark owner is justified in being worried about being able to collect. Nevertheless, the deposit requested is sufficiently high that it could prevent the applicant for cancellation from proceeding with his case. The mark owner is also correct that the applicant for cancellation is required to state his name and address clearly on his statement of case, regardless if this information is otherwise accessible.

In conclusion, the Adjudicator was satisfied that there were grounds to request a deposit, but considered the request for a deposit of at least NIS 100,000 as being excessive. The Adjudicator therefore ruled that applicant for cancellation should post a deposit of NIS 10,000 for the case to continue.

Interim Decision regarding cancellation proceedings concerning IL TM 243626 and 219665, before Ms Yaara Shoshani Caspi, 21 October 2013.


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