Can Israel and China Develop a Symbiotic Relationship?

April 16, 2014

China Israel  yinyang

In per capita terms, Israel is the highest patenting country in the world, despite the previous blog article. China is a big market, and a manufacturing powerhouse with a very large population.

An interesting article describes symbiotic relationships between the countries.

At present, the single client who I’ve done most IP work for in the past three years is a Chinese company part owned by an Israel start-up, that is essentially a joint venture between China and Israel, with an Israeli CEO and president, and Chinese workers. I don’t know how representative this business model is, and suspect that it is a unique phenomenon, but it is a highly successful one.

I hope there will be more cooperation in future years.

China and Israel are both ancient civilisations. The classic overland trading route to China via India starts in Israel’s Negev Desert. Columbus was actually looking for a Westward way to India when he stumbled on the New World, which he called the West Indies, and the populations Indians.


Accelerating Patent Examination when Inventor is Aged

April 3, 2014

old inventor

Background

In Israel, applications are sorted into tentative technology groups on filing and then, within each technology group, are examined approximately in order of priority date. Periodically, when the ratio of examiners to applications under examination drops sufficiently, the Israel Patent Office sends out Notices Prior to Examination for another batch of applications. There is no need to request examination and no special fee for so doing.

Under Section 19a of the Israel Patent Law, the applicant may pay a fee and request accelerated examination. If there are sufficient grounds for so doing, the patent office will allow the examination of a pending case to proceed, and the examiner should prioritize examination of that case on receiving a response to office actions.

This model has been confused somewhat by the various bilateral and multilateral patent prosecution highway agreements, where positive examination results from the country of first filing may be used as the basis of accelerating examination elsewhere.

The case

On 9 December 2012, Cimas Limited requested accelerated examination of Israel Patent Application No. 216870 on the grounds that the inventor, Professor Shimon Slavin, was born in 1941. Examiner Itay Katz noted that section 19aa1 allowed acceleration based on the age of the applicant, but not of the inventor. Since the applicant was a company, he rejected the request.

Applicant responded that Section 19aa6 allows acceleration in special cases where it is warranted. Whilst section 19aa1 does indeed relate to applicants, the fact that a company may be formed and a patent assigned to it for economic reasons was not supposed to shut the door in the face of elderly inventors who might benefit from acknowledgement of their inventive contributions.

The ruling

The amendment to Section 19 in 2012 was an attempt to codify patent office practice.

Within the discipline covered, Applications should generally be examined in order of filing. Not only is this fair, but otherwise a later filed patent could become a bar to practicing an earlier filed invention. Section 19 is an open list. As of 15 January 2014, requests for accelerating examination should be brought to the Commissioner’s attention.

There is no doubt that 70-year-old applicants are entitled to accelerated examination. Sections 39-43 of the Law states that inventors are entitled to recognition as such, but not to be entitled to anything else. The Commissioner was skeptical that this throws light on the issue in question. Citing Dr Shlomit Yanitzky Ravid, the Commissioner argued that being recognized as an inventor has indirect financial ramifications. Noting government decision 431 from 2006 to address the needs of the elderly which eventually resulted in a ministry for the elderly, and concerns for them to be able to remain in the workforce, the Commissioner ruled that there was a public interest in allowing elderly inventors to enjoy the fruit of their creation. He also went on to rule that the mere fact that the patent is assigned only partially negates the rights of the elderly inventor, for example, forfeiting the discount in filing fees.

Conclusion

The commissioner ruled that the application could proceed to Examination.

Comments

Age of inventor is certainly grounds for acceleration in the US, even now, after the America Invents Act, when the applicant may be a company.

However, arguably the Ministry for the Elderly and the Pensioner’s Party had plenty of opportunity to create an age of inventor clause in this amendment and didn’t. Age of Applicant is a general consideration not an exceptional circumstance and in absence of clear legislation, I am not sure that this interpretation is fair. If we accept age of inventor as being relevant, then what is the cut off age? Retirement age? 70? 80?   Then again, since the Law clearly states that age of applicant is grounds for acceleration, presumably companies such as IBM, Kodak, Coca Cola and the like, should have an advantage over start-up companies! The ruling opens the door to fraud by grandfathering in the inventor, i.e. adding grand-dad as an inventor to skip the queue.

Commissioner Kling has noted that advancing the interests of senior citizens is on the government agenda and used this as the basis for accelerating examination when the inventor is a senior citizen. What about other groups that the government wishes to advance? Former Chief Justice Barak ruled in favour of preferential treatment to rectify this situation. If women and men apply for a senior position and a woman candidate is as qualified as a man, the Supreme Court under Barak would have the woman chosen. Women are certainly under-represented as inventors. Very few applications list women as inventors. Possibly women inventors could request accelerated examination on grounds of their gender? Similar arguments could be proposed to accelerate examination for minorities (Caucasians, Beduin, Israeli Arabs, or for people living in the periphery, or settlers. There is a difference in that the aged are less likely to be around in 2 or 3 years when their application comes around for examination, but that may be true of citizens living on the Gazan border or actively serving in the army or doing reserve duty, minorities such as lifeguards and frequent flyers. I think this may be what the courts refer to as a slippery slope…

 

Over all, I think the decision is wiser than the wording of the amendment.


Finjan Files New Patent Infringement Lawsuit Against Sophos

March 16, 2014

finjan logo                                      finjan coffee pot

Finjan, Inc. has filed a patent infringement lawsuit against Sophos, alleging infringement of Finjan patents relating to endpoint, web, and network security technologies.

The complaint, filed in the U.S. District Court for the Northern District of California, alleges that Sophos’ products and services infringe upon six of Finjan’s patents. In the complaint, Finjan is seeking undisclosed damages from Sophos.


Opposing a client’s trademark by an advertising company

March 3, 2014

mother-in-law-underwear

Delta Galil Industries is a leading Israel underwear manufacturer. The company has filed trademark applications 244662 and 244663 for Bravo and for Machotonim Q.

 

Note: The word Machotonim should be read Macho with a ch sound, as in chair or chu-chu train. this sound is not actually a Hebrew sound at all. It is also not in Arabic. Funnily enough, nor is the P sound.  Arabs can’t say pants or Palestinian. they say B instead of P. The ‘tonim part is the suffix of the word tachtonim meaning underpants, where the ch sound is the guttural het as in Chanuka – a sound not found in the English language. I am going into these pronunciation details, since the word machotonim with the guttural het means in-laws, and is probably not the association that the underwear is intended to convey. Associations are funny things. The company name delta is, of course, the general shape of underpants or briefs, i.e. an inverted triangle. this is clever. I suspect the Q relates to the shape of the fly, as in Y-fronts, but it may be like G as in g-string, since apparently the product has less rear end coverage than conventional male underwear. 

Zarmon DDV LTD and Zarmon Goldman LTD filed an opposition to the marks claiming to have worked on the advertising campaign and never having been recompensed. Further, they requested that the opposition proceedings be stayed whilst their claims for compensation be heard by the District Court.

Selgisohn & Gabrieli representing Delta Galil argued that the District Court proceedings were against an advertising agency and Delta Galilee wasn’t a side in the proceedings. Furthermore, it was proper to stay a patent office hearing only if the court hearing was likely to bear on the result, but in this case, the issues were separate.

Ms Jaqueline Bracha accepted Delta Galil’s arguments and awarded costs of 350 Shekels and a further 3500 Shekels legal expenses to Delta Galil.

COMMENT

I think this decision is correct. I suspect that since the Zarmon companies were not working for Delta Galilee directly, they can’t even record a lien on the registrations.

 


Israel Removed from Special 301 Watch List

March 3, 2014

pirate food pyramid

Oh, better far to live and die
Under the brave black flag I fly,
Than play a sanctimonious part,
With a pirate head and a pirate heart.
Away to the cheating world go you,
Where pirates all are well-to-do;
But I’ll be true to the song I sing,
And live and die a Pirate King.

Pirates of Penzance Gilbert & Sullivan

At the end of January 2014, the Office of the United States Trade Representative removed Israel from the intellectual property watch list of the Special 301 Report. This formally means that the United States, who are, of course, totally objective leaders of the free world, no longer consider Israel to be a haven for pirates.

TEVA is the largest company traded on the Tel Aviv Stock Exchange, and is the world’s biggest manufacturer of generic drugs. Israel has appeared in the watch list since 2005 since its patent laws did not conform to the standards that the US demanded, particularly in the field of generic drugs. Inclusion on the Watch List of the Special 301 Report subjects countries to increased scrutiny on relevant trade issues, and even possibly to sanctions.

Unlike WIPO that reflects international IP agreements reached by the countries of the UN, or even TRIPS which reflects an international regime pushed through by the US under the World Trade Organization in an attempt to bypass WIPO, The Special 301 Report simply reflects narrow US interests and does not reflect international standards accepted by the world, the free world, the Western world or advanced economies. It represents the US trade interests.

Israel recently amended its Patent Law to US satisfaction. See here. Not overly surprisingly, various Israel Ministers are on record as stating that this kowtowing to US financial bullying is a positive development. Economy Minister Naftali Bennett’s spin is that the decision is an “important vote of confidence by the US”. He believes that the move will help Israel advance its industry and innovation, not just in the US but around the world. Justice Minister Tzipi Livni has vowed to continue strengthening Israeli intellectual property rights. “This is a significant achievement, which reflects great efforts for advancing the international status and position of Israel as a leading country in intellectual property,” she said.

This development is the culmination of negotiations between the US and Israel from 2008 onwards. See 2009 article and 2010 article for the history. Beyond the hype, we suspect that this development does not particularly help TEVA and may account for recent job losses and talk of the company moving more activities abroad.


Israel Patent Office Website Goes Bilingual

February 24, 2014

bilingual

The Israel Patent Office has launched an English language version of their website. It may be found here.

The website looks like a mirror image of the Hebrew site, and has many of the same features. At present, Patent Office decisions are linked to, but remain in Hebrew. Annual reports have been translated. The translation appears to be humanoid, rather than by machine. It is not perfect, but is quite comprehensible. The online payment doesn’t seem to work, but it is not clear if this is a glitch that will be ironed out, or is intended.

The patent database is lined to but remains in Hebrew. The trademark database that is linked to has the same layout as the Hebrew version but has enough English to be more or less navigable by an English speaker without Hebrew. Since trademarks often are filed in Hebrew, I would urge people not familiar with both languages to use an Israeli attorney for searches.

Perhaps the most obvious omission is the warning on the front-page of the Hebrew site against non-licensed practitioners.

In general, I consider this development a positive one that should have been done years ago.


Israeli Photographer Wins Copyright Damages from AlJazeera

February 24, 2014

AljazeeraAl JazeeraDalal

Shmuel Rachmani photographed a bus destroyed on the coastal road in a terrorist attack in April 1978, including photographs of the terrorist, Dalal Mugrabia, and one of a victim. At the time, the photographs were printed in Maariv, then Israel’s evening newspaper, now a weekly.

On 15 March 2010, Israel’s Channel 10 broadcast an item about Dalal Mugrabi during which, the two images were aired together with the Al Jazeera icon, thereby alerting the photographer that Aljazeera had infringed his rights. In the Maariv paper from where the photographs were taken, the name of the photographer was displayed, so Shmuel Rachmani alleged that in addition to copyright infringement, his moral rights were trampled on.

Rachmani sued for a total of 80,000 Shekels, consisting of two counts of willful copyright infringement and two counts of willful moral rights infringement. Under the 2011 Copyright Ordinance, the maximum damages is 10,000 Shekels, but for willful infringement, this may be doubled.

Rachmani also requested an injunction against Aljazeera, but dropped this demand. In separate proceedings Rachmani sued Channel 10 and came to an out of court settlement.

Attempts to mediate a settlement were in vain. During preliminary stages of the trial, 7,000 Shekels in legal fees were awarded to the plaintiff.

THE RULING

Judge Raphael Jacoby of the Jerusalem District Court rejected arguments regarding Jurisdiction under International Law, standing and the like, and considered them damaging to the defendant. He noted that Aljazeera is broadcast on local cable television under license, so the company has local presence.

Jacoby went on to rule that the pictures were creative works that were protected by copyright and dismissed the hot news defense, noting that the images related to a historic event from 36 years ago. He did not consider the usage incidental. He acknowledged that the photographer could not produce the negatives and prove ownership or produce proof that the copyright was not transferred to Maariv, but accepted evidence of the archivist of Maariv that this was the standard work terms between the parties, and the acknowledgment of the photographer in the original newspaper as proof that Rachmani was the copyright owner.

Noting that under the new law, Rachmani could sue for 100,000 Shekels a time, Judge Raphael Jacoby ruled that the damages sought were proportional and ordered that Aljazeera should compensate Rachmani a total of 50,000 NIS for the infringements and should pay a further 15000 Shekels in legal fees.

T.A, 45542-12-11 Rachmani vs. Aljazeera International LTD, Jerusalem District Court, by Raphael Jacoby, 19 February 2014.


Hair-raising

February 19, 2014

head and shoulders pantene

Proctor & Gamble and their local representatives sued for compensation for trademark infringement and passing off after police raided a store-room in the Yagel village and seized thousands of bottles of Head & Shoulders and Pantene shampoo, some full and some empty.

The bottles were counterfeit, but Proctor & Gamble could not prove actual substantive damages, and the Magistrate’s Court ruled 30,000 Shekels (about $7000) in estimated damages.

COMMENT

Counterfeiting causes tremendous damages, not only in lost sales, but in damage to reputation. A lot of R&D goes into developing a liquid gunk that removes oiliness and dandruff without irritating the scalp, which can be washed out leaving a conditioning component behind.  I assume that the counterfeit stuff is less effective.

 


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.


Adding Evidence in Israel Patent Opposition

February 2, 2014

abbott

Patent oppositions proceedings in  Israel follow a set path.

the Opposer(s) file their statement of case. The Applicant responds, and the opposer submits evidence. Evidence should be submitted at the first opportunity, and applicants are not allowed to submit further evidence at a later stage, to prevent cases being unnecessarily dragged out.

It happens, however, that evidence may sometimes not be submitted at the first opportunity as the  applicant or opponent does not consider it relevant. The statement of witnesses brought by opposing counsel may make it relevant and necessary to add such evidence at a later stage. The Israel Patent Office regulations enable such late submissions, if there is a prima facie basis for determining that the evidence was not submitted earlier, not in order to drag out proceedings, but because either the evidence was not known to its presenter at an earlier date, or because the presenter was unaware of its relevance which only became clear due to statements made by the opposing counsel.

Israel Patent Application No. 122546 to Abbott was published for opposition purposes on 31 December 2012. On 29th April 2012, Teva Pharmaceutical Industries and Vertex Pharmaceuticals Inc. filed oppositions.

In response to the oppositions, the applicant requested to correct the specification. In Israel it is legitimate to correct the specification at this stage provided that such corrections are in no way widening of the requested monopoly.

Opposers opposed the request to amend the specification on legal grounds and thus did not submit evidence. Abbott’s witness argued scientific grounds for allowing the amendment, and so Opposers requested permission to submit evidence against this request. Abbott’s counsel argued that it was too late to submit such evidence and that the Opposers were widening the grounds for opposition.

The topic in question relates to whether the 3A4 enzyme is an example of the P450 family of enzymes.

In his ruling, Commissioner Adv. Assa Kling ruled that there were no sweeping grounds to forbid submission of evidence and on weighing it up, he would see whether the evidence was indeed submitted in response to Abbott’s witness, or if there was indeed, evidence that opposers were filing evidence as a delaying tactic or to widen the scope of the opposition.  He noted that he could award costs to one side or the other when ruling costs on the amendment to the claims.

COMMENT

I think the patent office is taking the correct approach here. the rules for submitting evidence are there to prevent abuse. If the applicant is claiming abuse, he has to support his case.


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