Israel « The IP Factor

AIPPI Israel Hosts Event on the America Invents Act

February 7, 2012

On 14 February 2012, the AIPPI will be amorously promoting an event to examine the ramifications of the America Invents Act.

The event, open to members, is to be held at the Dan Tel Aviv Hotel 99 haYarkon Street (my idea, Claude Sterne of Quinn Emanuel who is speaking and sponsoring the event asked me to suggest an alternative to the Tel Aviv Hilton).

The program will run from 8:30 am to 1:30 PM, starting with coffee & cake, and finishing with a light lunch.

It’s not all food though. Food for thought will be provided by Adv. Theresa Kavanaugh of Goodwin Procter who will talk about the ramifications of the America Invents Act on patent prosecution.

After a coffee break, Adv. Claude Sterne of Quinn Emanuel will inform us as to how the Act will affect prosecution, and then Dr Yehuda Livne of Teva will provide an Israel perspective.

Both Adv. Theresa Kavanaugh and Adv. Claude Sterne will speak for 90 minutes each. We note that this is substantially longer than Judge Randall Rader’s presentation at the Colb – Bar Ilan event in January, and than Zeev Pearl spoke at an in-house seminar at PCZL.

To register, contact rachelh@s-horowitz.co.il

Irrelevant and Irreverend Comments

I have not had the pleasure to hear Theresa Kavanaugh, but Claude is an entertaining and informative speaker, albeit less entertaining and authoritative than Judge Rader who spoke on this topic at Bar Ilan University last month.

90 minutes is a long time. I suspect that the coffee before each marathon session will be appreciated by those who sometimes have trouble staying awake at these events…

It is a shame that Israel IP professionals in general – and from the program, patent attorneys in particular, are expected to have nothing more romantic to do on Valentine’s Day than to hear yet another presentation on the America Invents Act.

Leave a Comment » | Academia, Israel, US, Intellectual Property | Permalink
Posted by Dr Michael Factor

The Duty of Disclosure in Israel

February 6, 2012

In Commissioner Circular No. 011/2012, the Commissioner of Patents, Adv. Assa Kling has clarified the Duty of Disclosure under section 18 of the Israel Patent Law.

Prior art cited against corresponding applications abroad as novelty or inventive step destroying (for example X and Y citations in PCT applications, and citations cited under Sections 102 and 103 in the US) should be provided on a CD or other appropriate digital media. Only these citations should be provided on the CD which should be clearly labeled as appertaining to the specific application and, if more than one disk is submitted, these should be labeled 1 or x, 2 of x, etc.

COMMENT

Although the commissioner does not ask for it, and perhaps does not want it at all, I would nevertheless advise clients to submit a list of other references believed relevant, such as those cited in another related application that does not share a common priority, art referenced in the background cited in an Information Disclosure Statement (IDS) in the US, etc., since I can see failure to do so could be considered as bad faith by the courts, and in Israel Law, bad faith is considered very seriously indeed.

In this point, I am aware that I am at odds with my former colleague, Mr Shimon Shalit, whom is an authority in such matters. I would therefore be interested to hear from other practitioners with views or strong feelings one way or the other.

Footnote

I suspect that Merpel, the IP Kat’s friend, would make some Katty remark about the CD being a circular in a circular.

The tee-shirt was chosen for Kim Lindy who liked the one I found for oral exams (see here).

Leave a Comment » | Israel, Israel Patent Agency, Israel Patent Office | Permalink
Posted by Dr Michael Factor

Software patents in Israel

January 12, 2012

The long awaited guidelines regarding the patentability of software inventions in Israel have finally been published by the Israel Patent Authority.

In brief, it appears that the term ‘industrial application’ as required by section 3 of the Israel Patent Law 1967 may be fulfilled by patents in any field of technology.

Software inventions having a real world effect are considered technological and thus patentable. To establish whether a software implemented invention is technological it has to be considered in its entirety. I think this means that the Commissioner of Patents requires examiners to take a holistic approach to the question.
Business methods are not considered industrial, nor are algorithms.
A real world effect may be indicated by something that may be perceived by the senses.
Software that creates new links and causes a computer to work better or faster may be considered a real world effect.
Software per se, abstract thought processes and algorithms not having a real world effect are not patentable, but may be protected as a literary creation under copyright law.
Beauregard claims are allowable.
A software invention that enables automation that is more than simply doing something automatically that could previously be achieved manually, may be patentable. I think this means that software inventions that enable a result to be obtained that could not hitherto realistically be obtained, could be patentable.

Helpfully, the relevant guidelines for the Examiner are appended to the circular, together with a number of specific examples from real patent applications, a verdict regarding whether the claimed invention is patentable subject matter and a brief explanation.

For reference purposes, I am reproducing the examples below:

GB 2391348

A data processing apparatus, comprising:
a processor;
a compiler for compiling application code to generate instructions for execution by the processor;
a non-invasive trace unit coupled to the processor for generating, from input signals received from the processor, trace signals indicative of the instructions being executed by the processor;
the compiler being arranged to control the compilation of the application code dependent on the trace signals.

This is considered patentable.

GB 2407655

A method of operating a computing device having an operating system and a dynamic link library containing a plurality of functions accessible by an executable program, each function in the dynamic link library being associated with an ordinal number, the method comprising:
Providing the dynamic link library as a first part and an extension part each containing one or more of the plurality of functions;
Causing the executable program to link to functions in the first part directly by means of the associated ordinal numbers;
and Causing the executable program to link to functions in the extension part indirectly via a further library containing additional functions.

This is also considered patentable.

WO2007002296

A method for automatically calculating a discount for a customer offered by a merchant through a reservation system, comprising:
accessing at least one reservation file relating to a reservation;
accessing transaction data relating to at least one payment card transaction;
comparing one or more elements of the transaction data against one or more elements of the reservation file to determine a match;
and electronically calculating the discount based on[e or more] one or more elements of the transaction data and one or more elements of the reservation file.

This is considered non-patentable as although computer implemented, the real world effect is a business method which is not considered as having a technological effect.

EP 1301912

A method of operating a transaction processing system enabling users to authorize transactions, said system comprising a central transaction processing system (19) having at least a first data communications interface and a second data communications interface, comprising the following steps carried out by said central transaction processing system (19):
receiving transaction data from an offering party, relating to a specific transaction to be authorized by a user, and receiving a first transaction reference (TRN) relating to and uniquely identifying said specific transaction, via a first data communication path (16), at said first data communications interface;
generating a second transaction reference (TRR) which is different to the first transaction reference (TRN) and which uniquely identifies the transaction within the central transaction processing system (19);
sending said second transaction reference (TRR) to the offering party; after receiving said transaction data, conducting communications over a second data communication path (22), different to said first data communication path, with said user over said second data communications interface;
using said second path, conducting a secure access procedure in which authentication data is received and said authentication data is verified;
using said second path, receiving said first transaction reference (TRN) relating to and uniquely identifying said specific transaction from said user, said transaction reference not being previously transmitted to said user in said second communication path (22);
using said second path, receiving confirmation from said user; and
in response to said confirmation, transmitting an authorization signal to authorize said transaction, said authorization signal including said second transaction reference (TRR), wherein said second transaction reference (TRR) is not known to said user.

Despite being applied to business applications, there is a technological effect of improved data security so the claimed invention is patentable.

GB 2171877

A method of making a telephone call from any available telephone, comprising: obtaining a special code by making a prepayment;
inserting the prepayment in a memory in a special exchange and being allocated to the special code in the memory for use in verifying a calling party call;
dialing the special exchange when a telephone call connection is desired;
inputting the special code for verification; inputting the number of called party;
verifying at the special exchange by checking the special code and comparing the prepayment less any deductions for previous calls in the memory with the minimum cost of a call to the called party station;
connecting the called and calling parties’ stations in response to said verification; monitoring the remaining prepayment less deductions for the running cost of the call;
and disconnecting the call when the remaining prepayment has been spent by the running cost of the call.

Despite being a business method, by virtue of the ‘special exchange’, there is a redeeming device and the invention is patentable.

GB 2418281

A method of creating a document having a displayable area on which information is placed, the method comprising:
a. providing a plurality of content-items which contain information that it is possible to display on the displayable area;
b. dividing the displayable area into a set of subareas each capable of receiving one or more of the content-items;
c. generating at least one set of proposed arrangements in which the content items have been arranged within the set of sub-areas;
d. selecting at least one of the proposed arrangements, according to predetermine criteria, as the layout of the content-items within the sub-areas of the displayable area to create the document; and
e. causing a printing means to print the created document.

This is considered simply automation of manual type-setting and is not considered as patentable.

US 2007033615

A method for transferring programs to a secondary storage device using an interactive television program guide implemented on user television equipment, to cause a first display: in a display screen of at least one program listing related to at least one program;
using the interactive television program guide to enable a user to select a program listing from at least one displayed program listing;
using the interactive television program guide to cause the program related to the selected program listing to be recorded on a digital storage device;
using the interactive television program guide to cause a second display in the display screen that includes at least one recorded program listing for at least one program recorded on the digital storage device, wherein at least one recorded program listing includes a recorded program listing for the program recorded on the digital storage device;
using the interactive television program guide to enable the user to select the recorded program listing to transfer the recorded program from the digital storage device to a secondary storage device; and
using the interactive television program guide to transfer the recorded program from the digital storage device to the secondary storage device.

This is considered as having a real world effect and is therefore patentable.

EP 1062615

A method of monitoring, diagnosing and treating medical conditions of a plurality of remotely located patients using a central data processing system configured to communicate with and receive data from a plurality of respective patient monitoring systems, wherein each patient monitoring system is capable of receiving and storing patient data, the method comprising the steps of:
obtaining patient data from a plurality of patient monitoring systems at the central data processing system;
analyzing the obtained patient data from each respective patient monitoring system at the central data processing system to identify medical conditions of each respective patient;
displaying identified patient medical conditions for each respective patient in selectable, prioritized order according to medical severity; and
in response to selecting an identified medical condition for a respective patient, displaying treatment options for treating the medical condition.

This is considered as having a real world effect. Presumably the diagnosis – since methods of treatment are not statutory subject matter under Section 7(i).

WO 2010128511

A method for determining a matching score between a first set of H1 feature points, and a second set of n2 feature points, the method comprising the procedures of: producing a triple-wise affinity tensor, including the affinity score of assignments of triplets of feature points of said first set of feature points and triplets of feature points of said second set of feature points; determining a leading eigenvector of said triple-wise affinity tensor; iteratively producing a binary optimal assignment vector by discretization of said leading eigenvector; and determining a matching score between said first set of feature points and said second set of feature points according to said triple-wise affinity tensor and according to said optimal assignment vector.

As claimed, not patentable, since the invention relates to a mathematical abstraction. If image analysis and comparison using the method had been claimed, the result would have been different.

WO 2006082590

A method for adaptive filtering of at least one pixel having an initial value of an image composed of pixels, the method comprising: calculating local expected value for the pixel; calculating local signal to noise ratio; calculating local filtration ratio based at least on said local signal to noise ratio; calculating a weighted average of the initial value and local expected value using said local filtration ratio as weight; and assigning the weighted average as a new value for the pixel.

Since this is applied to at least one pixel, this is not an abstract algorithm, but rather an applied algorithm for image processing and is patentable. Furthermore, this cannot be simply considered as automation of something formerly done by hand since manually processing in this manner would not have been practicable.

WO 01/37131

A method of classifying an image, comprising the steps of segmenting the image into a plurality of regions and, for each of at least one of the regions: quantifying each of a plurality of visual properties of the region on a numeric scale for the property; comparing each quantified property with a plurality of bands of the numeric scale for the property, each band being associated with a computer-readable character; and arranging in a predetermined order the characters associated with the bands in which the quantified properties fall to form a region character string.

Can not be done manually and classification is considered a real world effect. Patentable.

WO 2005005004

A method comprising the following steps to be performed electronically: selecting at least two participants from a plurality of participants; presenting a first image to each selected participant; and requesting each said selected participant to provide a description of said first image.

Although implemented by a computer, this is a manual process and is therefore not industrially applicable.

EP1184798

1. A method of processing and presenting data, comprising the steps of:
(1) identifying claim dependencies of claims in a user-selected patent;
(2) constructing a patent claims hyperbolic tree for said user-selected patent using said identified claim dependencies; and
(3) displaying said patent claims hyperbolic tree.

4. A method of processing and presenting data, comprising the steps of:
(1) retrieving patent citation information pertaining to a user-selected patent, wherein said patent citation information is backward patent citation information or forward patent citation information;
(2) constructing a patent citation hyperbolic tree using said retrieved patent citation information; and
(3) emphasizing nodes of said patent citation hyperbolic tree according to time-based criteria, wherein said time-based criteria includes at least one of filing date, priority date, length of pendency, effective filing date, invention date, critical date, on-sale date, public disclosure date, and public use date.

Although computerized, could be performed manually by a data searcher, therefore not patentable. However, if linked to specific electronic processes, might be considered patentable.

EP 1618498

A method for managing a treelike data structure for text-to-phoneme mapping for automatic speech recognition or text-to-speech, which method comprises steps for creating a decision tree comprising a parent node and at least one leaf node, said method comprising also steps for searching data from said nodes, characterized in that the decision tree is created by storing the nodes sequentially in such a manner that nodes follow the parent node in storage order, wherein the nodes refining the context of the searchable data can be reached without a link from their parent node.

Unlike the previous example, by virtue of the highlighted section, the claimed software implemented invention is linked to specific hardware and is thus patentable.

COMMENTS

In general, I think the Commissioner has got this right.

It is a shame that the guidelines issued a year after they were promised.

3 Comments | Business Method, Israel, Israel IP, Israel Patent, Israel Patent Agency, Israel Related, software Patents | Permalink
Posted by Dr Michael Factor

Sotah – Naomi Ragen drinks the bitter waters of plagiarism

January 9, 2012

Naomi Ragen, Israel’s best-selling writer was accused of plagiarism by three separate authors. She was vindicated by the Israel Supreme Court last week regarding her book The Ghost of Hanna Mendes and it’s alleged similarity to The Lion and the Cross. Ragen was, however, found guilty by Judge Yosef Shapira of the Jerusalem District Court concerning the similarity of some dialogue in her novel Sotah, to a book Growing With My Children: A Jewish Mother’s Diary by Sara Shapiro. Plagiarism is not a crime on the statute books. Ragen was found guilty of Copyright Infringement, Unjust Enrichment, Negligence and Theft.

The Case

Shapiro published a non-fiction, largely autobiographical work, called Growing With My Children: A Jewish Mother’s Diary which was published in 1990 by Targum Press. The book was a daily journal from the years 1986 to 1989, focusing on the author’s participation in an ongoing parenting workshop, and the ups and downs she experienced along the way to becoming a more skilled and patient parent.

There is one conversation, between the author and her mentor, Rabbi Simcha, that is closely paralleled by a conversation in Ragen’s novel Sotah between the central character, Dina, and her husband, Yaakov. Furthermore, Shapiro takes on a secular home-help, Sonia, and Ragen’s protagonist gets exiled from her extreme ultra-orthodox community and sent to America to work as a home-help for a secular woman, Joan.

Ragen has argued that she had indeed read Shapiro’s book, and subconsciously may have used elements as inspiration for her novel. Simply groats for her mill. It is difficult to prove otherwise. The similarities are sufficient to raise questions, but there are differences as well. The dialogue is rewritten. It is not identical.

Ragen’s attorneys pointed out that the conversation attributed to Rabbi Simcha by Shapiro were not her creation and not her copyright. The authoress’ response in the dialogue are less insightful, less memorable and weaken the case of copyright infringement still further.

To find Ragen guilty, Judge Joseph Shapira performed legal gymnastics to have the case admitted at all, since there were strong grounds for dismissing the case altogether under the Statute of Limitations, as seven years had passed since Shapiro became aware of the similarity. He took the position that the ongoing sale of Ragen’s book made copyright infringement an actionable tort on an ongoing basis. Such a position makes some sense if Ragen was selling bootleg copies of Shapiro’s book, but that is not the case here.

Shapira’s opening paragraphs establishing the facts of the case refer to the Ragen as having copied sections of Shapiro’s book, indicating that he had prejudged the issue. He also relates to the Michal Tal case mentioned above, which he also heard. But this should have been inadmissible since it was not the case under trial. That said, since some witnesses were heard simultaneously in both cases, with consent of both parties, it may be considered admissible. That as may be, as noted above, Ragen was subsequently vindicated in the Tal case.

Where there is copyright infringement, there are no grounds to rule on grounds of Unjust Enrichment, which is applicable only where there is no statutory tort, such as in the A.Sh.I.R. case. Thus finding under both counts seems wrong. Finally, what’s theft? Since when is literary theft a separate tort?

Shapiro’s book is a non-fictional, somewhat autobiographical guide to making a marriage work, about adjusting oneself to one’s surroundings. Ragen’s story is about getting out of a situation that’s wrong, about taking control of one’s life. I think that a fair use defense is appropriate. Furthermore, to the extent that Ragen’s work was inspired by Shapiro’s I think that a satire defence is possible – although difficult under Israel Law. We also note that Shapiro did not create the idea of employing a home- help. These have been employed by countless young mothers under stress. (I believe that my mother employed an au-pair when I was a baby. That wasn’t plagiarism either).

I accept that copyright covers all literary work, regardless of quality. A couple of pages of dialogue may therefore by covered by copyright law. Nevertheless, the text in question is not memorable in its own right. We are not discussing a witty aphorism but simply a conversation. My main criticism of the ruling is that it places the bar for literary novelty simply too high. It is bad policy to consider copyright infringement in a case where two pages of dialogue in one book bear a similarity to a couple of pages of dialogue in a different book. This is counter-productive to the aim of copyright law which is to enrich by promoting creativity, not to stifle authors. Koheleth son of David (Ecclesiastes) was right on one level that there is nothing new under the sun. The similarities between Shapiro’s book and Ragen’s novel warrant a footnote in a critical edition of Ragen’s book or an academic paper. Nothing more.

For those interested, the concept in Jewish Law (Halacha) analogous to fair use is “זה נהנה וזה לא חסר ” lit. “this one benefits but that one does not lose out.” (T. B. Baba Kama 20:1 – 21:1, Shulhan Aruckh, Hoshen Mishpat Chap. 363: 1).

The plaintiff sued for NIS 1,000,000. Although the judgement finds Ragen guilty of copyright infringement, unjust enrichment negligence and theft, it does not award damages but gives the parties an opportunity to negotiate a settlement. It seems highly unlikely that the conversation in question helped Ragen sell books, or that Ragen’s novel adversely affected Ms Shapiro’s sales. Under the relevant copyright law which is the old 1922 Copyright Ordinance, not the new 2007 Copyright Law, the statutory damages are limited at NIS 10,000. A fair settlement would seem, therefore to be loose change. Indeed, from a financial perspective it is difficult to see how any award that will stand legal scrutiny can possibly recover legal costs. but what both sides are looking for seems to be moral vindication rather than damages.

The case: 9430/07 Sarah Shapiro vs. Naomi Ragen, by Judge Yosef Shapira, Jerusalem District Court 11 December 2011

Comments

The ruling is a 92 page whopper, which is why this took me a month to post.

Shapiro’s account in her own words was published in Cross-Currents, an ultra-orthodox discussion group here.

I first covered the Michal Tal case here. See also naomi-ragen-fights-back for details of all three plagiarism suits against Ragen, and Naomi Ragen Accused of Plagiarism – Again for details of a third case filed by Cynthia Rosengarten concerning the Sacrifice of Tamar.

An account of the Supreme Court Ruling concerning dismissal of the case brought by Michal Tal is to be found here: haAretz version and Jerusalem Post version. Ragen’s reporting is here.

For newspaper accounts of the District Court decision against Ragen see haaretz

Additional Comments

In Jephte’s Daughter, another novel by Ragen, the story relates to the daughter of a Rabbi growing up in New York. When I read it, I was reminded of Chaim Potok’s novel The Chosen. There was a scene where the girl and two of her friends experimented with make up in the girl’s bedroom. This reminded me of a scene in the 1980 hit movie Grease. I have no doubt that Ragen has read the Chosen and seen Grease. Whether these influenced her consciously or not, there is no case of copyright infringement or plagiarism. (Note, I also believe that the Warner Bros character Bugs Bunny was inspired by Groucho Marx, although I’ve never seen any reference to this in print).

It is worth noting that the plagiarism cases against Ragen were filed around the time that Naomi Ragen challenged segregated seating on bus routes serving the ultra-Orthodox community by filing a suit to the Supreme Court on grounds of gender discrimination. A lot of the flack Ragen’s been under for alleged plagiarism seems to be driven by ultra-Orthodox opposition to the position she has taken on this issue which some see as threatening their life-style. Many of her books are sympathetic to some aspects of the ultra-Orthodox lifestyle and critical of other aspects of the same. Some members of the Ultra-Orthodox do not take kindly to criticism, and may find her novels offensive.

Personally, I see social criticism as positive and believe that Ragen has raised issues that should be addressed. I think that every Jabotinsky was correct in his analysis published in “the War and the Jew”, that every nation needs its Jews; a visible, different looking population to hate. Unfortunately, in Israel, the Ultra Orthodox seem to fill this position for some secular Israelis. (The secular Israelis fulfill a need for the ultra-Orthodox that goyim fulfilled in Eastern Europe, so everyone benefits from the situation, but it keeps the Messiah from coming). However, Ragen has not written the sort of anti-ultra-Orthodox diatribe that the mainstream (secular) papers sometimes publish; where one can substitute the word black, ultra-Orthodox or Hareidi with the word Jew, Kike or Yid, and the piece looks like something that could have been published in Nazi Germany. Rather, Ragen has criticized anti-social behavior exhibited by some members of the ultra-Orthodox camp and cultural norms in some circles that she sees as having negative ramifications. She hasn’t attacked the population. In this regard, she is like Bruria admonishing her husband Rabbi Meir to pray for sin to be removed by sinners repenting, not for sinners to be removed (Talmud Babli Brakhot 11).

In my opinion, as outlined above, this ruling established the facts of the case, but gets the law wrong. I believe it should be reversed on appeal.

The Biblical Sotah from which Ragen plagiarized her title, is discussed in Numbers 5: 11-31. She is a woman accused by her husband of having been inpregnated by another. In a trial by ordeal, the sotah drinks bitter waters, and, if guilty, swells up, and dies. If innocent, she and her husband are able to put this issue behind them and she is blessed with offspring. Ragen may have been impregnated by exposure to Shapiro’s book, but her work is an original literary creation, and is admitted as such by Judge Shapiro. I believe that she deserves to be blessed with (literary) fruit for being wrongfully accused.

16 Comments | book review, Copyright, Fair Use, infringement, Intellectual Property, Israel, Israel Copyright, plagiarism, Uncategorized | Permalink
Posted by Dr Michael Factor

Philanthropical Giving – the fight of the non-profits

January 1, 2012

David Zilberslag is a well-known, public-spirited, Ultra-Orthodox leader who raises funds for helping those in need. He filed a trademark application (No. 205341) for כח לתת – Koach l’tet, literally, “the power to give”.

The organization L’tet - Humanitarian Aid In Israel, (ארגון לתת) filed an opposition to the mark, but after the applicant, represented by well-known attorney, Dr Yaakov Weinrot, his statement of case with a request for costs, L’tet withdrew their opposition, stating that although they believe the opposition was legally justified, they did not think it was correct use of public funds.

The Commissioner for Patents and Trademarks, Dr Assa Kling, accepted that both the applicant and the opposer did important humanitarian work, but felt that it was more appropriate for such organizations to find other ways to settle their differences than to fight opposition proceedings and generate legal costs. Nevertheless, he could not deny the parties’ right to fight through the system.

Commissioner Kling ruled that in principle, the applicant was entitled to recover legal costs, but the awarding of such was discretionary on the Patent and Trademark Authority. No details of actual costs incurred were given, and generally actual costs are rarely given, but rather an estimate of fair costs. In light of the circumstances and the fairly early stage at which the dispute was terminated, he decided to use his discretion and not award costs at all.

COMMENT

This is, unfortunately, not the first time (and probably not the last time either) that two humanitarian organizations have been involved in trademark disputes.

Unlike the case of Johnson & Johnson vs. the American Red Cross, regarding the continued use of the red cross symbol by the ambulance service, this case has some merit, in that charities should choose distinguishable names so that donors are not confused who they are supporting.

There are a number of cases where different charities have confusingly similar names. Then again, “to give” is rather generic, and one wonders why anyone should have rights to a word like that for philanthropic purposes.

I can understand the Commissioner’s position regarding philanthropic organizations wasting public money on legal fees. It is, however, a moral – ethical position, not a legal one. From a purely legal standpoint, one wonders if it would not have been appropriate to have awarded the usual costs awarded to an applicant for a trademark, where the opposition is dropped after the applicant files his statement of case. Commissioner Kling is well within the scope of his discretion, and value based judgements have been in vogue since Former Chief Justice Aharon Barak abandoned formalism and instigated more value-centric judgements.

Although I have no strong feelings regarding this decision not to award costs, personally, I am a formalist who prefers the “law is an ass” approach to Law. I note that judges and commissioners are not democratically elected, and often the reasons and methods of selection for such judicial personnel are somewhat murkily concealed. In such a system, I would prefer judges and commissioners to judge and to award costs in a manner that neither favours plaintiff nor defendant and which is actually neutral to the type of goods or service that a trademark applicant provides.

I note that we do not know if the Attorneys were actually charging for their time or if they were working pro bono. If one organization that helps the needy opposes a mark filed by another organization, is it wrong that the losing organization should transfer funds to the organization that wins?

Leave a Comment » | Israel, Israel IP, Israel Patent Office Rulings, Israel Trademark, trademarks, Uncategorized | Permalink
Posted by Dr Michael Factor

Israel Patent Law Ammended

December 14, 2011

On 8th December 2011, the Israel Knesset passed an amendment to the Israel Patent Law 1967.

There appear to be two changes, the first cosmetic and the second substantive.

Firstly, all references to the Israel Patent Office “משרד הפטנטים” or uses of the word “לישכה” meaning ‘office’ are amended to “רשות הפטנטים” and “רשות” , i.e. Patent Agency and Agency.

More substantively, there is an amendment to reflect that the Israel Patent Office, whoops, Agency will henceforth provide PCT style International Search Report compliant search reports (ISRs) and will also be able to provide International Search Reports for applications received by the Israel Receiving Office of the PCT, where one or more inventor or applicant is an Israeli Citizen or corporation, and also for citizens or corporations of other countries having a relationship and appearing in an appropriate appendix to the Law, to be updated from time to time.

COMMENT

The Israel Patent Office (it’s OK, I can still use the old name until 8 January 2012 when the amendment comes into force) has been styling itself Israel Patent Agency for a while now, but this is now enshrined in the Law. There don’t seem to be punishments for people who forget, but I will do my best to comply.

Regarding the Searches, there are a few questions that require clarifying and no doubt the Commissioner of Patents will issue a Circular in due course:

Can Israel applicants still elect the USPTO or EPO to search their applications as they can at present?
What happens if applications are filed at the International Receiving Office in Geneva? – at present, this does not affect the authorized International Search Authorities, but maybe this will change.
How much will an Israel PCT search cost?
When will this come into effect – not the amendment to the Law, but that Israel will provide ISRs?
Now that the Israel Patent Agency is to provide ISR type searches, does that mean that at last they will start searching and examining all claims, at least for the first invention as defined by PCT Law and Regulations, and not just the independent claims as they generally do at present.

Time, and Patent Office Circulars, will no doubt tell.

Leave a Comment » | International Search Report, ISR, Israel, Israel Patent Agency, Israel Patent Office, patent search, Patents, PCT, WIPO | Permalink
Posted by Dr Michael Factor

Missing the bus

December 8, 2011

Omnibus claims laconically claim the invention as described in the specification and/or illustrated in the figures of a patent application, instead of reciting strctural detail or listing method steps.

Back in 2008, the then Israel Commissioner of Patents, Dr Meir Noam, banned independent omnibus claims as being unclear, see here. That was some five years after Dr Noam assumed office. He failed to explain why their clarity had suddenly changed for the worst, or why he’d suddenly noticed.

The present Commissioner of Patents, Mr Assa Kling, has now issued a circular ruling (Circular 008/011) due to the inherent lack of clarity, omnibus claims will henceforth not be allowed, whether submitted in dependent or independent form.

COMMENT

He is, of course correct, but then again, they are no more unclear now than they were previously. We hope that this indicates that henceforth, dependent claims are going to be examined on their merits. We also wonder if there is any scope for Israel courts to enforce the “pith and marrow” of a patent, regardless of claim deficiencies.

Leave a Comment » | IPO, Israel, Israel IP, Israel Patent, Israel Patent Office, Patents, Uncategorized | Permalink
Posted by Dr Michael Factor

Is the Israel Patent Office ready to become an International Search Authority for PCT applications?

December 5, 2011

Back in 2010, WIPO voted to allow the Israel Patent Office to become an International search Authority. Since then, the Israel Patent Office has provided International Search Report (ISR) style searches for new applications first filed in Israel where applicant declares an interest in filing abroad.

Additionally, regular examinations are now provided in IPEA style.

In 2012, WIPO and the Israel Patent Office was decide if the IPO is ready to become an ISA. Depending on the cost and quality of a Blue & White search, patent attorneys in eligible jurisdictions (just Israel? Israel and Micronesia? elsewhere?) will advise applicants accordingly. Is the Israel Patent Office ready?

Leave a Comment » | Israel, Israel Patent, Israel Patent Office, Patents, PCT | Permalink
Posted by Dr Michael Factor

The IP Factor

AIPPI Israel Hosts Event on the America Invents Act

The Duty of Disclosure in Israel

Sotah – Naomi Ragen drinks the bitter waters of plagiarism

Philanthropical Giving – the fight of the non-profits

Israel Patent Law Ammended

Missing the bus

Is the Israel Patent Office ready to become an International Search Authority for PCT applications?

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