Click Switch Refresh – what are considered reasonable costs?

July 7, 2014

Up_in_Smoke

British American Tobacco (Brands) LTD. or BAT, filed Israel trademark application no. 232537 for the slogan “Click, Switch, Refresh”. The trademark was opposed by Phillip Morris Products, and on allowance, costs of 98,966 Shekels were awarded against Phillip Morris who challenged the costs as exorbitant.

The applicant considered the costs as actually incurred, real lawyer’s fees, as evidenced by invoices from David Colb., and also argued that since the opposer had acted in poor faith and was an international player, there were grounds to award costs as an example and warning.

Phillip Morris considered that the costs were out of all proportion to the amount of work done, the nature of the case and when the opposition was withdrawn. Furthermore, the opposer argued that some of the costs were not sufficiently detailed and should therefore be refused.

 

RULING

The Commissioner is authorized to claim costs under Section 69 of the Tradaemrk Ordinance. As per Supreme Court Ruling 891/05 Bagatz Tnuva, the winning party is entitled to actual costs provided these are reasonable, taking into account the nature of the case, the amount of work, the stage reached, equitable behaviour of the parties and the like.

In this case, there is no difference between pro forma invoices and tax receipts where the pro forma invoices are expected to be settled. The attorney is entitled to set his fees. The opposer failed to point out specific reasons why costs were considered exorbitant, merely complaining about the overall charges.

On the other hand, an extension fee taken was allowed at the official patent office rate of the patent office, and not at $150 as charged. What appeared to be two charges for the same train journey between Rechovot and the patent office was allowed only once. The witness’ expenses of $400 for flight, $71.53 for food and drink and 2655 Shekels for two nights at the Tel Aviv Hilton were not allowed as no evidence was given, beyond general travel agent fees.

 

COMMENTS

Reading between the lines, it appears that the attorneys-of-record, who are known for their hospitality, put up their client and witness at the Colb Farm in Rehovot, and charged the witness’ train ticket and a typical two night hotel package in Tel Aviv to the losing side.

Adv. Kling correctly refused the hotel fee as not a reasonable incidental expense. It seems that the correct procedure is that Colb should either accommodate their witness in a bona fide hotel and keep the receipts, or, could perhaps apply for recognition of their hostelry services as a Ben & Breakfast or boutique hotel, and issue invoices. If my understanding is correct, the Commissioner is correct not to allow them to claim Tel Aviv hotel expenses when putting up witnesses themselves.


Israel IP 2013, a Quantitive Overview

June 17, 2014

 Israel Patent Report 2013

The Israel Patent Office has published its summary of 2013. Their focus is on their efficiency. I have culled and am reporting the information that I believe is of more value to IP practitioners. My interpretative comments are in italics.

To enjoy the graphs and the graphics – a hot air balloon lifting a paper car, and no-doubt signifying hot air, recycling, creativity, and fen-shui, or something, readers can access the original here. I think that this literary digest is more user-friendly. Each to his own.

PATENTS 

The number of patent applications in 2013 was 6184 which is down 9% from 6793 in 2012, and is the lowest number since 2003. Approximately 600 of these applications are Divisional Applications and 6 are patents-of-addition.

The Israel Patent Office notes that since 2012 there has been a 40% discount for local applicants having a turnover of less than 10 million Shekels, but fails to note that there was a massive jump in filing fees of about 40% back then. My take – the Shekel is very strong so Israel is a more expensive destination than some others.

The number of first filings in Israel is 889, which is also a record low, less than at any time in the past decade. It is possible, however, that more Israeli start-ups are first filing in the US, either as Provisionals or regular US applications since the US fees have been going down, and the dollar is weak.

The pendency period prior to examination starting has been dropping steadily and is now 28 months on average, with biotech being especially fast. This may be explained by the increase in Examiners due to the Israel Patent Office becoming an International Search Authority of the PCT, which required the IPO to employ at least 100 examiners.

Second office actions typically issue 5-6 months after a response is filed, which is similar to last year and rather better than in the past. 

On average, examination takes 2 to 27 months, with Biotech taking rather longer on average – 37 months.

The Israel Patent Office has issued 3698 patents in this period, which is more than for any other solar calendar year in the past decade except 2011. 

The number of PCT applications filed in Israel was 1199 which is up from 1113 in 2012, but still below 2011 levels.

658 out these (55%) filing in Israel, have taken advantage of the relatively low International Search Fees and elected Israel as the Search and Examination Authority. 321 selected the EPO and 220 selected the USPTO. 

The report claims that the total number of applications filed by Israelis has remained constant, but more are filed in Israel as opposed to in Geneva. I don’t thing this is true, but do accept that the service provided in Israel is at International levels, with 91% filing electronically. 

What is clear is that in both absolute numbers of originating countries and by Receiving Office, Israel ranks 17, and clearly has a smaller population than any of the countries that have more filings.

Israel is the second fastest receiving office at getting applications to WIPO, with 99.3 applications getting there in les than four weeks, only lagging behind Denmark. This is a fairly useless statistic for the Israeli inventor, but no doubt gratifying to Dr Michael Bart and his team. I have been presently surprised by the quality of Israel generated International Search Reports and have recommended them to clients. In the past the USPTO often failed to provide the International Search Report (ISR) in a timely manner, but they have got better and also better at searching, even occasionally finding relevant art in non-US patent literature. The US fees have dropped somewhat and they may be more popular.

Israel is proud of the speed of PCT examinations, with 90% being examined within 3 months, ahead of the US and EPO. Furthermore, they blame security related examinations being forwarded to the Ministry of Defence for clearance, for the remaining 10% which take 4-5 months to issue.

There is an interesting of table of where incoming patent applications originate, that shows both Paris Convention filings and PCT national phase entries. This is of value when planning overseas marketing strategy.

Lists of the more prolific local and international filers into Israel had few surprises.

Some 20% of patents are issuing by modified examination under Section 17c, relying on a foreign issued patent from one of a list of examining authorities. This number has been dropping steadily since 2010, and is below 2008 levels. 

Some 130 applications were examined out-of-turn by one or other acceleration mechanism. This is higher than in previous years and no doubt reflects the various fast lanes of the Patent Prosecuting Highway, since only 18 applications were considered ‘green’ and fast-tracked thereby 

Of the 3887 applications allowed, 32 were opposed. 27 oppositions were dropped by the opposer and 14 resulted in the applicant dropping the case. Of the four patent oppositions that went full term to decisions, 2 applications were allowed to issue and two were rejected, with the ruled on oppositions taking an average of just over 4 years to be resolved.

Five applications to cancel issued patents were filed with the patent office. 21 final rejections were appealed. 9 requests for patent term extensions were filed and 4 were granted. 41 lapsed patent requests were considered and there are 8 pending decisions for employee inventor compensation. 

In absolute terms, there are fewer applications filed in Israel than in South Africa, New Zealand or Malaysia. In terms of patents per gross national product, Israel lags behind Korea, Japan, USA and most of Europe. 

When normalized for the size of population, Israel remains surprisingly attractive. Israel remains a must-file country for pharmaceuticals, biotechnology, organic fine chemistry (whatever that means) and medical technology. It holds its own in computing. Interestingly, Israel is also noticeable as originating PCT applications for medical technology and pharma, so Israel’s innovative companies are no less significant than the Israeli generic suppliers.

DESIGNS

The number of design applications was 1353 which is the lowest for a decade. 492 of these come from Israel. Of the 861 foreign cases, the US is the most prolific filer, followed by Brazil (104 applications, mostly Stern Jewelry), Europe, Korea, Japan and China.

TRDEMARKS

There were 9580 trademark applications into Israel in 2013. This number is less than 2006 to 2008 but higher than the other years of the last decade. Part of the drop is due to the introduction of multi-class applications, since there is an overall growth in the number of classes being filed in. Multi-class filings and the fact that of the 9580 applications, some 4930 were Madrid Protocol applications, implies less work and income for Israel trademark attorneys in basic filing. There are, however, some 176,978 issued trademarks in force, that need renewing. (Costa Rica has 183,226, and I suspect a better mark to attorney ratio).

As of the end of 2013, there were 20 competing mark cases, 98 trademark oppositions, 14 single party appeals and 40 cancellation or registry correction cases. Overall, the Israel Patent Authority has managed to resolve more of these than have been initiated.

Based on WIPO statistics, Israel ranks 46 in terms of trademark originators, behind Algeria, Kazakhstan, Bosnia and Herzegovina and Azerbaijan. Hoewever, Israel is only 19th in terms of popularity as a destination under Madrid.


Trademarks in Israel, Gaza and the West Bank

April 30, 2014

Borders change. Infringement Continues

Israel

Israeli trademark law is governed by the Trademark Ordinance (New Version) 1972 (“the Trademarks Ordinance”). The Trademarks Ordinance applies only to the territory of the State of Israel, i.e. the territory over which Israel has extended its sovereignty. This includes Jerusalem, both East and West, and the Golan Heights. However, Israel Trademark Law does not apply in the West Bank or in Gaza. West Bank trademark law is based on the Jordanian Trademark Act of 1952. Gaza trademark law is based on Egyptian Trademark Law. The Palestinian Authority maintains separate trademark Offices in the West Bank and in Gaza. The registration of trademark rights is conducted separately in each of those jurisdictions. The three trademark laws applying between the Jordan and Mediterranean are fairly similar since the laws are based on the British Trade Marks Act 1905.

Israeli trademark protection may be obtained under the Madrid Protocol. Neither the West Bank nor Gaza are party to the Madrid Protocol. In Israel, trademark registrations are valid for 10 years, and may then be renewed for additional 10 year periods. In the West Bank and Gaza, a trademark registration is valid for an initial period of 7 years from the application date, and renewable for subsequent periods of 14 years each.

Most imports to the area come through Israeli ports which will stop goods believed to infringe trademarks registered in Israel. Israel is active in enforcing IP rights, and has an effective police and court system. IP enforcement in the Palestinian administered territories is less easy. Where there is room for profit, there is temptation to cheat and there have been cases of counterfeit DVDs, detergents and liqueur made in Israel. The situation in the Palestinian administered territories is currently worse, but is improving. The sheer volume of traffic crossing the borders creates opportunities for smuggling. So to help enforce trademarks effectively, we recommend registering marks in all three jurisdictions.

We have developed a good relationship with a Palestinian attorney who is managing partner of a Palestinian Law firm and is licensed to practice in both the West Bank and Gaza has a Masters degree from a UK university and excellent English who will be attending INTA. If you’d like to meet with us at INTA discuss registration and enforcement in Israel, Gaza and the West Bank, and to receive discounted costs by registering in the three jurisdictions, please contact us.


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.


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