US Patent Law for European Patent Professionals

November 26, 2015


I was given a copy of US Patent Law for European Patent Professionals, by Audrey Nemeth to review, read it quite quickly and forgot to publish something. Now that the IPKAT has published a review, it has spurred be to get around to this myself.

The IPKAT’s review is here.

The book was written by a European patent attorney whilst preparing for the US patent agent license. It looks at US Patent Law from a European perspective.

Bibliographic data: hardback, xxviii + 215 pages. ISBN 9789041160447. Book’s web page hereAudrey Nemeth’s blogpost introducing this book on the Kluwer Patent Blog is here.

One of the most interesting points that it raised is the different histories behind the patent laws and the different basic philosophies that affect terminology, prosecution and patentable subject matter.

In Europe, for a patent claim to be valid it must describe an invention having novelty, utility and inventive step. In the US one requires novelty, utility and non-obviousness. I expect that most practitioners are aware of this, but haven’t necessarily thought about the difference in any depth.

As a result of this book showing the two systems side by side I realized that in Europe there is a basic philosophy employed by the Examiners during examination, that to deserve a patent, one needs to actively improve on the existing, by having an inventive step, whereas in the US, one is entitled to a patent for anything new under the sun made by man, unless it is obvious in light of the prior art.

Though similar, these concepts are not the same. In Europe, having dismissed the main claims as lacking novelty or inventive step, the Examiner may state that the dependent claims do not provide anything sufficiently significant to be considered as being an inventive step. In the US, however, the Examiner starts from the assumption that the invention is patentable and feels obliged to show how each and every claim is anticipated or obvious in light of prior art and established doctrine.

It is this fundamental difference in approaches which explains why the USPTO traditionally awarded the patent to the first to invent and even after the American Invents Act which further closes the gap between the two systems, will consider prior disclosure by the inventor as not necessarily preventing him from obtaining a patent.

Veteran Israel Practitioner David Gilat has said on many occasions that the Israel Patent Office’s job is to issue patents and there is an assumption of patentability that has to be overcome for an application to be refused. I was never convinced by that argument and on balance think that in this issue as in many others, Israel is closer to Europe and this is why during opposition proceedings, although the onus is on the opposer to show that the Examiner was wrong to allow the patent, nevertheless there is no assumption of validity. Putting aside the philosophical aspects, the book is helpful in understanding the procedural differences in both jurisdictions.

Audrey Nemeth suggests that it is sometimes justified having different parallel applications drafted for the US and Europe. I find this a little excessive and don’t imagine many clients would be willing to pay twice to have the same application drafted twice. I can, however see value in having licensed practitioners in both jurisdictions critiquing an application.

A personal note

I am not licensed in Europe or in the US, but for most of my clients, the US is the #1 patent jurisdiction. Funding and subject matter permitting, most clients see Europe as highly desirable for patent protection, although may largest client (in terms of patent work) only files in the US and the Far East, considering Europe too expensive for companies there to compete with him.

When I draft patents, I consider both the USPTO and EPO guidelines and am familiar with the differences in the maximum number of claims that don’t require excess claim fees, the different positions of the USPTO and EPO regarding multiple dependent claims, unity of invention, the two-part claim construction, preferred transition terms and annotations of the claims. I don’t prosecute directly in the US or EPO by generally provide very advanced draft responses so that the associate has little to do other than to review and put into his or her template. In most cases for the US, I use the associate’s template so that there is even less for the associate to do.

Despite 15 years of experience, and having drafted and prosecuted hundreds of patents, I found this book worth reading and useful reference to keep handy.


What about Japan, China and Korea?

The US and European mind-states, though not identical, reflect a Western Judeo-Christian heritage. I think that similar works covering the Korean, Japanese and Chinese patent laws would be very helpful.

I have a book in the same series that looks at IP in China. In Communist China, Intellectual Property Law preceded regular property law. I have a book on Chinese IP whose opening chapter quotes Confucius. Notably, that book has no footnotes or references to court rulings. It seems that whereas in the US and Europe, court rulings create precedent, this is not the case in China.

I know that claims that I draft are generally considered clear by European and US examiners, but often receive long lists of clarity objections in Korea.  Sometimes I can work out what the Examiner’s problem is. Sometimes I am completely flummoxed. The Examiner is, of course, looking at a translation of the English text I wrote and my copy of the Office Action is a translation of the Examiner’s comments. In this game of Chinese Whispers, I have to rely on the associate whereas in the US and Europe, we are all looking at the same English language documents.


Method and System for Producing a Document

October 6, 2015


Israel Patent Application number IL 215110 titled “Method and System for Producing a Document” relates to Rami Dotan and Tal Petel relates to a method of producing a “yearbook”.

The claimed invention was originally rejected as relating to an administrative methodology rather than to a technical method. Furthermore, the claimed invention was rejected as known, in light of WO 2006063327 “Method of creating a yearbook”.

In response to the first office action, the first inventor scheduled a meeting with the Examiner who explained the rejection in more detail.

The Applicant responded to the Examiner’s summary of that meeting, that there is a technical problem in the market in that the graphic designer does not know the students and so it is difficult to correctly link photographs with text.

On 7 August 2013, The Examiner issued a further Office Action detailing why the claimed invention did not relate to patentable subject matter under Section 3 of the Law and added some additional objections.

On 17 November 2013 The Applicant responded with a narrower claim set that allegedly overcame the objections.
In a final rejection dated 26 June 2014, the Examiner again refused the application and the Applicant requested a further Interview.

On 5 November 2014, the Applicant, his “representative for the purposes of the Interview” (apparently Patent Attorney Chaim Brandstatter) and the Examiner met, and versions 4 and 4 1/2 of the claims were discussed. Based on the similarity of the cited art WO 2006063327 “Method of creating a yearbook” and the claimed invention, the Examiner was persuaded to withdraw his section 3 (patentable subject matter) rejection and to focus on the issue of novelty and inventive step (non obviousness).

Furthermore, the parties accepted that the differences between the cited art and the claimed invention were features known to persons of the art.

Following the meeting of 6 November 2015, the Applicant submitted a further version (version 5).

Despite the Examiner considering the claimed invention to be obvious in light of WO 2006063327 together with two elements well known in the art, the Examiner did a further search and discovered USSN 2002/0055955 “Method of Annotating an Image” that allegedly taught these two features. Consequently, the Examiner refused the application under section 5.

The Applicant appealed this decision:

The Applicant felt that the 5th version of claims, submitted after 5 November 2014 was not addressed. The Examiner countered that the elements in version 5 were not supported. The Applicant considered that this went against the conclusion of the meeting, Examiner guidelines and Section 23 of the Law.

According to the guidelines, after issuance of a final rejection, the Applicant can either correct the outstanding issues or request an interview. In this instance, the Applicant attempted to do both, and following the interview, submitted a further claim-set. Thus the Examiner was within his rights to reject the Application following the interview, despite the further amendment submitted.

Neither the Law nor the Regulations provide a maximum number of Office Actions, but the Deputy Commissioner, Ms Jacqueline Bracha considers it unacceptable to understand that the examination allows infinite iterations and the Examiner cannot issue a final rejection.

That said, the case was considered borderline and the Deputy Commissioner was prepared to rule on the merits of the claimed invention, i.e. to look at the final version of the claims.

The claimed invention is:

1. A method for producing a document (30, 32, 36) comprising photographs (38) of persons (16A, 16B, 16C) and texts (42) associated with said photographs (38), said method comprising the steps of:
Manually capturing a single photograph or a single group (A, B, C) of photographs for each of said persons (16A, 16B, 16C), by a photographer (24), and loading the photographs while recording the singularity to a first table (58) of a database (52) being a part of a site (22) on the internet (14);
Manually providing by an organization in which said persons (16A, 16B, 16C) are members, a second table (26) to said database (52), said second table (26) comprising one text (42) for each of said persons (16A, 16B, 16C);
Manually matching, by persons familiar with said persons (16A, 16B, 16C) each of said texts (42) of said second table (26) with one of said photographs of said first table (58);
Upon said manual matching, programmably hiding that text (42) and the photograph matched thereto and any photograph grouped thereto, thereby avoiding failures;
Manually printing, by a graphic artist (20) accessing said database (52), each of said matched photographs (38) adjacent to the text (42) matched thereto,
thereby tracing a failure once a text of said second table (26) cannot be matched with a photograph.

Claims 2-10 are dependent method claims and claim 11 is for a corresponding system.

The claimed invention is similar to the first citation, with two features taught in the second citation.
Since the Applicant does not provide an alternative method of implementation to that given in the prior art, the claimed invention is either not enabled or lacks inventiveness.

Section 12 requires enabling disclosure. Where a method of achieving the claimed invention is not provided, one can conclude that either it is not possible or that it uses known elements and is thus obvious. Either way, in this instance, the Application does not provide enabling disclosure and is thus not allowed.

In conclusion, the Application was rejected.


In Australia, the patent corresponding to WO 2006063327 did issue back in 2005. I am not sure though, that it would still be considered directed to patentable subject matter as such computer facilitated inventions are rather difficult to obtain.
From the number of dubious publications with titles such as Directory of World’s Leading Patent Experts that I am invited to appear in subject to paying exorbitant fees, it does seem that there are patent attorneys who missed out on their high school yearbooks and are willing to pay to see their mug-shot and biography in a directory that no one reads.

Israel Patent Office Statistics 2014

September 21, 2015

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

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

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

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

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

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

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

Fascinating Bits of Trivia

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

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

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

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


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

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


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

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

August 4, 2015


This ruling considers whether a generic top level domain g.TLD can be registered as a trademark.

Traveljigsaw LTD filed Israel Trademark Application TM 241856 for the word mark for:

Transport services; travel services; car hire services; arranging holiday transport; vehicle rental and leasing services; rental and leasing of passenger vehicles, commercial and industrial vehicles; rental and leasing of cars, bicycles, motorcycles, camping cars, trucks, lorries, vans, coaches, buses, caravans; rental and leasing of vehicle equipment and apparatus; rental and leasing of vehicle accessories, including, luggage carriers, car seats, child safety seats, vehicle trailers, luggage racks, bike racks; arranging for transportation of persons; travel arrangement services; travel reservation services; electronic information services, namely, interactive and on-line information services featuring vehicle leasing and rental and travel information and interactive and on-line reservation services for vehicle leasing and rental; booking and ticket services; arranging and/or booking of holidays, travel, tours, cruises and vehicle hire, including arranging and/or booking of holidays, travel, tours, cruises and vehicle hire via the Internet; arranging and/or booking of seats for travel, including arranging and/or booking of seats for travel via the Internet; travel agency services, including travel agency services via the Internet; including, but not limited to, all the aforesaid provided by electronic means including the Internet; consultancy, advisory and information services relating to all the aforesaid services, all included in class 39.

The mark was applied for on 26 October 2011 and the Trademark Examiner at the Israel Patent Office refused the mark under Section 8a of the trademark Ordinance 1972 as the mark was descriptive of the goods to be protected.

The Applicant disagreed, arguing that the mark was not descriptive and the link between the mark and the services was tenuous. The mark relates to a website and not to car services. The site doesn’t even offer car hire services but merely is a platform for such services. The addition of the .com makes the mark distinctive and not merely descriptive.

The Applicant further argued that various countries such as Italy, Greece and Romania had allowed the mark to be registered. The company was internationally recognized. The applicant did not, however, want the mark based on a foreign registration.

The applicant supported their argument with an affidavit which was not found persuasive. They therefore filed a second affidavit, and, following a final rejection appealed this decision to the Commissioner to rule based on the contents of the file, but requested that the contents of the second affidavit be kept confidential as it allegedly included trade-secrets.


Trade Secrets

Section 23 of the Fair Trade Laws 1999 allows the court to keep certain submissions secret, See 2375/13 Rami Levy vs. Moshe Dahan, 8 July 2013, where relevant considerations such as relevance of information to the proceedings, damage likely to be caused by its publication and the advantage to third parties.

In this instance, the confidentiality request relates to expenses in marketing and publicising the website, number of customers in each country during the period of 2004 to 2012, number of web visits from each country, invoices to Google and other suppliers.

Section 5 of the Fair Trade Laws states that:

A trade secret is business information of any type that is not public knowledge and is not easily obtainable, that provides a commercial advantage over competitors, so long as that the owners take reasonable precautions to keep the information confidential.

The information in question may be considered as trade secrets. In adversarial proceedings, the information is usually necessary to follow the adjudicator’s reasoning. In this instance, however, the proceeding is one of examination between the applicant and the Israel Patent Office and the amount of information that needs to be published is simply the minimum required to make the decision comprehensible.

In this instance, the decision does not require the second Affidavit by Peter Ronney from 2 May 2014 to enable interested parties to follow the decision, and so this information may stay restricted.

Inherent Distinctiveness

The purpose of section 8a is so that articles labeled with the desired mark (in this case can know the source of origin of goods or services (Seligsohn page 20).

In general, marks may be generic, descriptive, indicative, random and imaginary, although sometimes the boundaries between these categories are blurred. There is a theoretical continuum between generic and created marks, and the more unique and random the mark, or the more a mark has acquired distinctiveness, the wider protection, and generic marks are not protectable at all. Words that are descriptive of the goods or services must remain in the public domain. “” is, accrding to Deputy Commissioner, Ms Jacqueline Bracha, wholly generic and descriptive of the services provided, and the dotcom suffix is insufficient to make the mark unique and distinctive.

The .com suffix merely indicates a generic top level domain gTLD, see Kerley’s Law of Trademarks and Trade Names 15th Ed. (201) P. 859. The issue has been widely discussed in previous ruling 234287 “” from September 2013.

Quoting Kerley, the dotcom suffix merely indicates an international profile and therefore does not provide distinctiveness.

The summations noted that the company provides car rental services in Israel and abroad. Consequently, the argument that the company does not ONLY provide care rental services was not given much weight as this was the major activity and other services were related.

The fact that a name is registerable as a domain name does not imply that it is registerable as a trademark as the guidelines and requirements for registering domains in Israel  are very different from the trademark regulations, so the fact that a domain was registered does not free the patent and trademark office from independently examining whether marks are distinctive enough to serve as trademarks.

The commissioner noted that there is no connection between Traveljigsaw – the name of the service provider, and the services provided. Citing the TTAB – the Trademark Tribunal in the USPTO in its ruling concerning and it was ruled that such marks may not be registered even if the term ticket is dropped from the list of goods.

“The test for determining whether a mark is merely descriptive is whether the involved term immediately conveys information concerning a significant quality, characteristic, function, ingredient, attribute or feature of the product or service in connection with which it is used, or intended to be used. In re Engineering Systems Corp., 2 USPQ2d 1075 (TTAB 1986); In re Bright-Crest, Ltd., 204 USPQ 591 (TTAB 1979). It is not necessary, in order to find a mark merely descriptive, that the mark describe each feature of the goods or services, only that it describe a single significant quality, feature, etc. of the goods or services. In re Venture Lending Associates, 226 USPQ 285 (TTAB 1985). Further, it is well-established [*5]  that the determination of mere descriptiveness must be made not in the abstract or on the basis of guesswork, but in relation to the goods or services for which registration is sought, the context in which the mark is used, and the impact that it is likely to make on the average purchaser of such goods or services. In re Recovery, 196 USPQ 830 (TTAB 1977).

In turning first to the alpha or letter portion of this alleged mark (the word “tickets”), we find from this record that the evidence is overwhelming that the word “tickets” is merely descriptive of applicant’s services, even after all the earlier “ticket” and “ticketing” language has been scrubbed from the recitation of services.

Similarly in In re Dial A Mattress Operating Corp., 1999 TTAB LEXIS 623, 9-10 (TTAB 1999)  concerning the mark 188-mattress:

“We are persuaded that the analysis and rationale set forth in Dranoff-Perlstein and 800 Spirits, supra, would serve as an appropriate complement to the Federal Circuit’s Ginn two-part test in cases requiring a determination of the genericness of alphanumeric telephone number marks. Accordingly, we hold that if the mark sought to be registered is comprised solely of the combination of a designation (such as a toll-free telephone area code) which is devoid of source-indicating significance, joined with matter which, under the Ginn two-part test, is generic for the identified goods or services, then the mark as a whole is generic and unregistrable. Stated differently, a generic term is not transformed into a registrable mark simply by joining it with a toll-free telephone area code which itself is devoid of source-indicating significance.

TMEP section 1209.01(b)(12). Furthermore, it appears that a similar analysis has been adopted by the Office for examination of the ever-increasing number of marks which consist of or incorporate those portions of Internet domain names which are devoid of any source-indicating significance, such as “http,” “www” and “.com”. See Examination Guide No. 2-99, issued September 29, 1999, entitled “Marks Composed, in Whole or in Part, of Domain Names.”

Acquired Distinctiveness

Since the mark is generic it cannot have acquired distinctiveness. Nevertheless, the ruling went on to examine the alleged acquired distinctiveness and, citing Kerley, noted that A domain name registration as such is not an intellectual property right: it is a contract with the registration authority.”

In conclusion, the mark was refused.

Re TM 241856 to Traveljigsaw LTD for “RENTALCARS.COM”, ruling by Ms Jacqueline Bracha, 30 June 2015.

Israel Supreme Court Issues Long Awaited Decision regarding Service Inventions

July 23, 2015

employment agreement

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

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

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

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

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

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

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

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

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

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

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

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

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


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

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

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

A lack of uniformity in unity of invention

July 20, 2015
As Israel’s leading IP blogger, I regularly get emails and phone calls from students, inventors, academics and professionals, both from Israel and abroad, about various aspects of patent and trademark practice.
Most recently, I received an interesting question on what constitutes unity of invention. The question is rather better than the answer.
All regimes require unity of invention. One is entitled to protect one invention in a single patent. There are separate issues regarding double patenting, i.e. protecting the same invention with more than one patent, but, how is a single invention determined?
The practice relates to claims and differs in different jurisdictions.
In the US, unity seems to depend on the main class that the Examiner classifies the invention as and has to search when evaluating novelty and non-obviousness. One can file up to three independent claims (regardless of type) for the same basic price. However, there is no limit on the number of independent claims in the same class, since the searching requires trawling the same material.
US Examiners love to issue restriction orders due to multiple inventions, and sometimes do this based on the figures. They may require a restriction to a product or process, but may also require an election of a preferred species where different figures show different embodiments. However, once a structure is allowed, corresponding and withdrawn method claims can be allowed and rejoined so long as the method requires using the allowed apparatus.
In Europe, the theory relates to the inventive concept to be searched. In practice one is entitled to one independent method claim and one independent apparatus claim. Anything else and the claims will be reject as ambiguous.
It will be appreciated therefore, that the same claims may be considered as having unity in US but not in Europe and vice-versus.  Indeed, with two independent method claims and two independent structure claims each with minor differences, I’d expect the USPTO examiner to want inventor to elect either method claims or structure claims, and EPO examiner to want one of each.
In Israel (and there is no logic to this – it was a circular from Previous Commissioner, Meir Noam), one is entitled for up to two claims of each type. this can be method, product, system, gene sequence (now no longer patentable anywhere else).
Examiners will require restrictions on unity considerations, but there is no clear definition of unity. If a foreign patent office allows a set of claims one can request allowance under Section 17c and the issue of unity is not a grounds for objection by examiner or in opposition. What this means is that something acceptable in the US or in Europe (or in UK, Austria, Australia and other jurisdictions recognized in Appendix B for purposes of Section 17c) is acceptable in Israel. Since US and Europe have different standards, it will be clear that there is no clear standard in Israel.
See for more information.


Impotent Appellant Has No Standing

July 1, 2015

class action  no standing

This ruling relates to a Class Action filed in bad faith. The court ruled that when Applicant challenges the validity of claims made for a formulation, failure by the Applicant to take the formulation during the minimal period prescribed by the manufacturer, is sufficient to cancel the standing of the Appellant as representing the class in a Class Action.

The Appellant purchased a formulation intended to strengthen the male libido. Prior to the Appellant finishing the prescribed course of treatment detailed in the accompanying literature and as explained by the Supplier’s Helpline, the Appellant filed suit with the District Court claiming that the product is misleading, and requested that the case be considered as a Class Action. However, the District Court refused to see this as a class action since the Appellant had no standing, and therefore could not represent the class.

Supreme Justice Danziger upheld the decision of the lower court without awarding costs to either party, and added that the need to test that the plaintiff behaves equitably is anchored in Section 8(a)4 of the Class Action Law. The ruling of this court does not indicate a general ruling of what is considered equitable behavior as far as Class Actions are concerned. In one case Inequitable behavior occurs when a case is filed due to false motivation, such as an intent to damage a competitor or to “squeeze a compromise”. In other instances, the mere fact that a plaintiff is acting commercially, looking to profit from the Class Action does not, in and of itself, indicate that he is behaving inequitably, however the plaintiff has to behave equitably during the hearing. This is particularly important in cases where the plaintiff wishes to represent a class of consumers and not merely himself and when a lawyer solicits plaintiffs for a Class Action.

In this instance, the District Court has determined, from the evidence before it, that the Appellant:

  • recorded conversations with the service hotline of the vendor
  • did not read the accompanying literature, tried the formulation for too short a period in direct contradiction of the instructions that he received with the formulation
  • contacted a lawyer prior to finishing the course; filed suite 5 days after stopping the treatment
  • via his attorney, submitted advertisements that were not related to his decision to take the treatment

These facts resulted in the District Court concluding that the plaintiff did not have standing in his own right and could therefore not represent the class of men with impotence issues.

The Court concluded that the circumstances indicate that this is a rare case of someone initiating a Class Action inequitably, and contrary to Section 8(a)(4) of the Law. This conclusion is not based on the motive of the plaintiff, for one may be motivated by material gain, but by the inequitable behavior determined by the District Court. Simply not going the full course indicated by the manufacturer is sufficient to make the Appellant not appropriate to represent the class.

Oddly, and perhaps not inappropriately, this case was heard by three male judges, who agreed unanimously with the verdict.

4534/14 Appeal to Supreme Court, Eli Daniel vs. Direct Nature LTD

The Appellant, Eli Daniel, may not have had to pay compensation or costs, but, due to his actions, has entered the Israel legal text-books as having erectile dysfunction. Not the end of the world.

From discussions with pharmacist clients over the years I understand that the efficiency of all medicines, both classical and alternative (where there are active ingredients, as opposed to homeopathy) work to a greater or lesser extent in different patients due to personal physiology. A class of one is hardly a representative sample to test the efficiency of a treatment. There is a well documented placebo effect and presumably this works in both directions, so a patient lacking belief in a treatment is unlikely to see positive results. I assume that not everyone reacts the same way to aphrodisiacs, and there are large number of foods that are attributed as having both aphrodisiac and libido dampening effects. Apparently, patients taking classical medical treatment for erectile dysfunction still need to feel aroused, and taking the medicine alone has no effect.  I therefore wonder whether the treatment in question works some of the time and for some men. Certainly, there is no indication in this class action that this is not the case.


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