BioLineRx Receives Notice of Allowance for US Patent Covering Novel Treatment for Celiac Disease

June 15, 2014

 

celiac

Israeli company BioLineRx has announced their receiving a Notice of Allowance for a US Patent  covering a novel treatment for celiac disease. See http://online.wsj.com/article/PR-CO-20140611-903862.html for more details.

 

 


Amit Ben-Yehoshua Appointed Foreign Arbitrator in China

May 29, 2014

Amit Ben-Yehoshua has been appointed to serve for a three year term as a foreign arbitrator in China International Economic and Trade Arbitration Commission (CIETAC) which is the biggest arbitration institution in China and one of the prominent in the world. CIETAC resolves commercial and trade disputes by means of arbitration and mediation. Amit becomes the first Israeli Lawyer appointed to this position.

 

International arbitration is the most common mean chosen by parties to resolve disputes related to international business. International arbitration is recognized by 149 countries global wide according to the “New York Convention” of 1959.

 Amit works for Dacheng Law Offices which was founded in 1992 and is one of the first and largest partnership law firms in China. There are currently over 1,900 lawyers and staffs working for Dacheng Law Offices, most of whom are graduates from leading law schools within China or overseas.  A substantial number of our lawyers have expertise in areas including international trade, finance, construction, business administration, accounting, and taxation.

Amit is licensed to practice law in California and Israel, and holds a Master of Law degree in Chinese Law from Tsinghua University of Beijing.  He has been living in China since 2006 and has been working at two of China’s most elite law firms Da Cheng Law Offices and Zhong Lun. Amit is also the Vice Chairman of the China Law Committee ofthe International Law Section of the American Bar Association and is the Chief Editor of the China Law Committee’s publication the China Law E-Bulletin. Amit has had the unique opportunity to work as lawyer and as a Senior Counsel in three distinct jurisdictions (California, China and Israel) as a transactional lawyer and as an experienced litigator.

 Before coming to China, Amit served as a criminal defense attorney in United States. Earlier in his career, Amit served as a judicial clerk for the honorable Judge Haran Fainstein in the State of Israel.

I first met Amit at a Patent Conference in Shanghai. Israeli companies having issues with Chinese companies should consider arbitration as a alternative to the courts. Particularly where there is a lot of business between the entities which could be damaged by a no-holds bar war. I expect that Amit would be a good person to talk to about such matters.


Trademarks in Israel, Gaza and the West Bank

April 30, 2014

Borders change. Infringement Continues

Israel

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

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

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

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


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.

 


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