Sowing and Reaping, An insightful Look at the IP World by Professor Jeremy Phillips

October 3, 2014

sewing kats   grim reaper cat

I was very honoured that Professor Jeremy Phillips agreed to give a keynote lecture at my PCTea Party earlier this week. Jeremy is not just arguably the foremost trademark expert in the world and certainly the foremost IP blogmeister, but is also an excellent speaker. Having a panoramic perspective of the industry, his talks are not merely entertaining, but thought-provoking as well. Jeremy teased me somewhat, but then again, I teased him when introducing him. It was light-hearted banter that the audience appreciated, and neither of us were offensive or offended.

Taking his theme from the book of Koheleth (Ecclesiastes), Professor Jeremy Phillips looked at sowing and reaping in the IP world.  Jeremy noted that Koheleth (Ecclesiastes 1:4-11announced that there was nothing new under the Sun. In Diamond v. Chakrabarty :: 447 U.S. 303 (1980), MR. Chief Justice Burger ruled that patentable subject matter should “include anything under the sun that is made by man”. By combining these axioms he concluded that nothing was patentable!

More seriously, Jeremy’s main message seemed to be that most patents are an expensive waste of resources, as are most trademarks. Most copyright material has no commercial value either. He calculated that the likelihood of a UK company being struck by lightening was far larger than it was that they would be sued for patent infringement, and so he considered infringement liability insurance as a bit of a scam.

 Whilst well aware that less than 1o% of patents generate sufficient income to cover the filing and prosecution costs, he noted that the very small number of valuable patents generated sufficient wealth to justify the system.

Whilst owners of valueless Intellectual Property have a high level of protection, once patents, trademarks or designs are of commercial interest, there were various fair use, research and personal use exceptions and successful patents could be subjected to compulsory licenses and their owners could be threatened with fair trade and anti-monopoly litigation, so it seemed that worthless IP rights are over-protected, but the valuable ones are under-protected.

The main issue that Professor Phillips raised was whether anyone was educating the clients that they are essentially playing a type of roulette? He looked into who made money from IP and, noted that the patent office didn’t, courts didn’t, the owners didn’t and nor generally did pets! Whilst avoiding the big elephant in the room, I think there was implied criticism of the profession for making money by selling pipe dreams to gullible inventors. In the spirit of the Days of Repentance, it seems to me that it was more than appropriate to have the various IP professionals present contemplate their actions and to what extent we were really furthering innovation and to what extent we were feathering our nests at the expense of delusional wannabee entrepreneurs.

In Defense

My regular spiel at initial meetings with entrepreneurs is to the effect that I can help the prey client obtain protection for his invention/design/brand which is my specialty. Being a physicist and engineer I may even comment a little on the feasibility of an invention, but I do emphasize that I am totally unqualified to comment on the commercial viability of product based on a new idea and whether it will succeed in the market-place. Essentially I tell the client that I can help him (almost always a male)  predict the costs of IP protection, but have no idea of the income it will generate. I do warn him that statistically 80-90% of inventions I do a preliminary search for are knocked out as unpatentable, or as likely to receive only a very narrow patent in a crowded field and consequently to have little value in stopping competitors by generating a monopoly. I charge separately for searching and ask the client if her is interested in a preliminary search. I will file an application based on novelty to the best of our knowledge if I can make a case for non-obviousness and if the subject matter is arguably patentable – I do get 101 type rejections occasionally, but can generally deal with them. The boundaries keep changing and the goal-posts keep moving, so I am prepared to accept border-line cases and to fight for them. I do warn the clients that patenting is rarely profitable and is o easy money. I usually ask the entrepreneur if he has discussed the idea with his significant other and if he shouldn’t take care of mortgages, his pension, etc. first. I regularly suggest that I send him a written quotation and that he thinks about it and lets me know the following week. Thankfully enough of such inventors don’t listen that I have a steady stream of income from writing up patent applications of this nature.

I don’t think I am a rarity in showing this altruism. I suspect that very many colleagues and competitors are equally candid. I know that my ex-partner Jeremy Ben-David is speaking at an event later this month on the title of the wrong reasons for filing patent applications. Sending away potential clients with some good advice often has a pay back when the same client comes back, perhaps years later, with a better invention or recommends one to his associates.  The clients looking for a quick route to easy money are more likely to be the ones that leave one with unpaid bills.

I enjoy meeting the inventors and so long as meetings don’t go on for more than an hour, am generally happy to do so without charging. Surprisingly often they offer to pay me anyway, realizing that they’ve received valuable advice. In the past I’ve charged for first meetings but offset the fee against future work. It discourages wannabee inventors from doing the mail round and wasting the time of several patent attorneys. If I get the impression on the phone that the inventor is a time-waster or if he tells me that he’s been to see a few other firms and wants a further opinion, I generally charge for the first meeting. It is a good selection mechanism.

We may think that we should be educating the client and can charge for so doing, but clients often don’t want advice. They want a patent application. They don’t pay for advice. Free advice is something you can’t earn a living from giving but can still be sued for.

The interesting thing is that occasionally gimmicky patents do fly. Some kitchen gadgety things that I’ve patented that seemed quite superfluous to mankind have been successfully licensed to my surprise and astonishment. I was confident about the likelihood of the patent issuing but was quite open about my skepticism as to the commercial value of the invention.

Some corporate technologies I’ve patented have been licensed for 8 and 9 figure sums. It does happen. Just not very often.

I have corporate clients that are well aware that some patent applications I draft for then are unlikely to issue but if there is novelty and I can make a case for inventive step., i.e. some sort of argument against obviousness, I am prepared to do so, so long as the client understands the issues.  There are companies that file applications knowing that the resultant patent will be difficult to enforce but who have sound commercial reasons to file the applications anyway. Some companies need to show new features at each annual trade convention and want patent applications for these features. Often we are able to successfully prosecute the applications and patents issue. That said, with corporate clients, I may meet with and interact with the inventor of the head of R&D. Sometimes I meet the CEO or the CTO. I rarely meet the shareholders or investors and these sometimes include international R&D funds, etc. Am I aiding and abetting the managers of a company to defraud the investors or the share-holders if we file something because it helps the manager’s status within the company? Who are we responsible to? What are responsible for.

I think that contemplating these issues is valuable for patent attorneys as we approach Yom Kippur, the Day of Judgement.

The party celebrated 10 years of this blog. The packed auditorium was mostly filled by patent professionals and I received a lot of positive feedback about the event which consisted of an hour’s mingling with free beer, wine, tea and coffee, ice-cream, soft drinks and both savoury and sweet party foods, followed by Jeremy’s talk. I suspect that the professionals who like my blog came along and those that are less enamoured by my reporting style stayed away. It is a shame as I am happy to receive feedback and generally post comments submitted to this blog, unless they are clearly spam.

Most of the attendees came from smaller firms. It could be that the larger firms do enough internal events and have educational programs so that their staff feel less of a need to socialize with their contemporaries and to attend thought provoking presentations. Those that did attend seemed to enjoy themselves and there seems to be interest in doing this type of thing more regularly.
We wish aךl our Jewish readers a spiritually uplifting Yom Kippur, and םור Moslem readers a spiritually uplifted Day of Sacrifice – יום הקורבן.

 


Draft Israel Patent Office Circular on Conditions for Allowing Dispensation from Oral Exam

September 4, 2014

 Oral_Dental_Exam

Background

At present, candidate patent attorneys must have a recognized science or engineering degree, must train for a minimum of two years under a licensed patent attorney who has been licensed for at least three years (in certain circumstances, those licensed abroad may have this period shortened), and the candidate must pass a written exam which is an exercise in patent drafting, and an oral exam.

On 28th August 2014, the Israel Patent Office published a draft circular that details a proposal for allowing candidate patent attorneys who study a Masters in IP Law to obtain a dispensation from the Oral exam.

Comments from the public are solicited, but the window for such submissions, which may or may not be taken into account, is two weeks, i.e. up to 12th September 2014.

I am translating the main interesting bits below. Afterwards, will publish some comments in this forum and invite feedback here. I haven’t decided if I will submit comments formally yet.

The Draft Circular

circumlocation office

Section 143c of the Patent Law 1967 grants the Minister of Justice authority to free categories of candidates from the examination requirements.

Section 135 of the regulations specifies that a candidate may submit evidence of the required knowledge to the Minister of Justice and obtain the dispensation. Regulation 128 specifies the syllabus or perhaps better, the subject matter of the oral exam.

Tsippi Livni

The Minister of Justice, the Right Honourable Ms Tzippy Livni, (who seems to be too busy trying to negotiate a peace settlement with the Palestinians to be able to cope with run-of-the-mill legal issues like licensing patent attorneys), has delegated this authority to the Commissioner of Patents to address this issue on her behalf.

Under this delegation of responsibility, the Israel Commissioner of Patents and Trademarks Asa Kling proposes that candidate patent attorneys that fulfill the following conditions will receive a dispensation from the oral exam:

  • The required knowledge is obtained in a Masters of Law program that focuses on IP Law that is recognized by the Council for Higher Education at a university or recognized college
  • The curriculum includes courses in all subjects on the syllabus defined by Regulation 128
  • The candidate completed the course of studies with the highest distinction (summa cum laude?) and in the top 20% of candidates of that year
  • The candidate was present in at least 80% of lectures

The candidate will have to provide official transcripts and certificates.

None of the above will limit the Commissioner’ discretion from granting dispensations on a case by case basis in exceptional circumstances on an ad hoc basis.

Candidates can still appeal to the Minister of Justice under section 143c.

This circular does not recognize any specific academic institution as fulfilling the required conditions.

COMMENTS

law school

Should obtaining a Masters degree in IP Law be sufficient to obtain a dispensation from sitting the oral theory exam? The IP Community is invited to submit their comments. Here are mine:

I think the reason that this issue is being addressed is that various institutions such as Haifa University offer a Masters Program in IP and, currently, it is a costly program that I have wondered who it attracts? If such course provide dispensation from the notoriously difficult oral exam for Israel Patent Attorneys, they will be more attractive and more students will study them. I suspect that Haifa University and, perhaps places like Tel Aviv and Bar Ilan that offer academic courses that are not degree programs in patents and other IP things and maybe even undergraduate law programs such as ONO that teach an IP Law program, have been lobbying for recognition.

oral exam

The committee of examiners, by Law, should include one patent attorney only. In recent years it typically included two Israel Patent Attorneys and a further Attorney-at-Law, where one of the patent attorneys was also an attorney-at-law. After a scathing critique on this blog, the patent office ruled that where one patent attorney is also a lawyer, this was within the law, but has stopped the practice. It wasn’t within any reasonable interpretation of the Law, but I understand why a retroactive cancellation of all issued licenses or automatic passing of those that failed the Exam was not an acceptable alternative. One also wonders how examiners could test potential candidates on the Law when they were apparently unfamiliar with it. I have also suggested that the oral exams should be scrapped.

The patent exams should be held three times a year. A candidate failing an exam is not supposed to be able to resit within six months and in practice exams are held at intervals of just over six months to prevent candidates from having to wait eight months. Previous Commissioner, Dr Meir Noam, ruled that candidates with less than a year’s training could not sit the exam yet. This was probably a good idea, but was, in my opinion ultra vires, and should have been the decision of the Minister of Justice.  There have been other legal shenanigans including a retroactive amendment of filing fees to take care of a thoroughly sensible but nevertheless ultra-vires initiative of then Commissioner Dr Meir Noam to stop printing hard copies of a journal that no-one read, but to allow publication on the Patent Office website.

I don’t have official statistics, but it seems that more candidates are passing the theory exam now that the committee includes only one patent attorney and two attorneys. This is not a surprise, since in a competitive and shrinking market, there was little incentive for a committee having a majority of its members being patent attorneys, to graduate and qualify more competition. Occasionally things go wrong. I know of cases in recent years where the candidate had previously worked for the examiner. It shouldn’t happen but it has. (The candidate’s comments regarding the services he’d have had to provide to qualify are inappropriate for publication on this blog).

As someone who has many years of academic study behind me (Talmud, Materials Engineering, Physics, Law), I do not dismiss academia as irrelevant. I do not, however, think that an academic theoretical knowledge should compensate for practical experience and knowledge of IP issues. The oral exam is not a theory exam. It is an oral test of practical knowledge. The examiners test that the candidate knows drop-deadlines and knows about designs and trademarks. Examiners often tested that the candidate was aware of the differences between main regimes such as regarding grace-periods, business method patents, software patents, gene patents and stem cell patents.

An IP Law degree, should, in my opinion, train candidates in specific areas such as Internet Law. It should be high level and specific. The IP practitioner’s qualification should be general. It should be detailed but not require the candidate to have formulated opinions or even to be knowledgeable about contentious issues.

Some IP practices do not provide training to trainees. They use them to draft applications, often for a percentage that gets whittled down in practice by the trainer taking his cut first, so that the trainee gets paid nothing. The system is immoral and probably illegal since trainees are considered as salaried employees unable to work elsewhere, but who don’t earn a minimum wage. Many of the practitioners operating the scam do not provide any training whatsoever. Other firms do provide a salary and training. A trainee should get hands on experience of all aspects of IP, not merely do the less profitable work to free the attorney from meeting clients. A big firm can provide a more formal training structure. However, sole-practitioner can train if he or she is willing to involve the trainee in all aspects of his/her practice including contentious issues. Indeed, as a sole practitioner, I did successfully train a couple of now licensed patent attorneys. After every sitting I get emails from new colleague-competitors thanking me for blogging IP decisions and recommending text-books to them.

No individual practitioner’s practice will cover all aspects of IP. The trainee will generally have to study some topics by his/herself. There are a couple of recent textbooks here and here on Israel IP Law, both reviewed on this blog. Reading these, reading the Law and regulations and being aware of court and patent office decisions, perhaps by following this blog, should provide the knowledge to let anyone reasonably intelligent (and most patent attorneys are) pass the theory exam.

I do read books and papers by Israeli IP academics and have met many of them. I do not think that they are really qualified to educate the next generation about what happens in practice. Some are too busy trying to change the system in light of his/her ideas of justice, to be aware of what actually happens. Supreme Court precedents do not necessarily influence examiners at the patent office. A masters’ course is a cash cow for the academic institution. The customers expect to pass with good grades and their expectations are often fulfilled.

oral exam 2

Someone competent should not need dispensation from the exam because he/she will be able to pass it.

Perhaps the current theory exam which is an oral viva could be modified and partially replaced by a written short answer paper, possibly multiple choice? Such an approach would at least standardize the requirements.

I believe that the US requirement of on-going training is also something worth considering. I am not sure how many licensed and practicing patent attorneys would pass the theory exam if they were to sit it again.

asa kling

Commissioner’s Kling’s proposal lists various requirements and does not automatically grant any successful graduate of a masters program in IP Law with a dispensation. It limits it to a percentage of the students. This means that the standard is subjective and not objective.  It is designed to keep numbers down. I don’t think doctors, accountants or attorneys at law get dispensation from professional qualifying exams by virtue of a having a degree. I think a Master’s program should be academic and not vocational. Qualifying to advise and provide services to the public requires practical knowledge.

jeremy phillips  Some years back, Professor Jeremy Phillips successfully negotiated with the UK Institute of Patent Attorneys that the Queen Mary Institute of Intellectual Property Law’s Masters’ program provide a professional qualification. He correctly points out that many competent practitioners don’t know how to teach. There are, however, some substantive differences between the UK Institute membership and the Israel Qualification in that anyone can write and prosecute patents in the UK, whereas in Israel one has to be a licensed Attorney-at law or a Patent Attorney.

Many years ago, Howard Poliner, who now works for the Ministry of Justice drafting IP Laws and amendments, used to offer a course to trainee patent attorneys. It did not replace the Exam but provided preparation for it. I think this is a useful service that universities should offer. Indeed, I thought about teaching such a program myself.

The exact scope of what patent attorneys can and cannot legally do in Israel is a contentious issue between patent attorneys and attorneys-at-law. Licensed patent attorneys interpret the relevant law (sections 19 and 20 of the Israel Bar Act and section 154 of the Israel Patent Law) somewhat wider than do various patent searchers, patent portfolio managers and others. See here for more information.

Dr NoamAlthough I am concerned that the profession should be open to anyone with an appropriate competence and not to a limited number of new practitioners each year, I am rather horrified that the Association of Israel Patent Attorneys has not seen fit to hold an extraordinary general meeting about an issue that is clearly of extraordinary relevance to the membership. I suspect the fact that the chairperson, Dr Meir Noam is actually not a practitioner in private practice and hasn’t been for over a decade including a period that he was the Commissioner, may have something to do with the lack of urgency he is showing to this issue. Of course, the Association Israel Patent Attorneys could be working on an official position paper that they intend submitting without coordinating with the membership, but I don’t suppose they would be so sneaky, would they?

Talking of being sneaky, sneaking out this draft circular at the end of August, with AIPPI conference in a couple of weeks and the High Holidays coming up is a good way to ensure that there isn’t significant discussion and debate on the issue. I have no doubt that the universities have been lobbying this for a while.

Hopefully, having shot off criticism in all directions, some readers may see fit to respond and we can have an open debate on the topic. All comments that are to the point and reasonably polite will be published.


Invitation to the PCTea Party!

September 4, 2014

PC TeabagssewProfessor Phillips at a PCTea Party at the British Houses of Parliamentcinema city

To celebrate 10 years as an owner or partner in my own firm (including the partnership JMB, Factor & Co. circ a 2008-2011), and, a decade of this blog, the readers of IP Factor are cordially invited to toast in the Jewish New Year at a PCTea Party to be held in Cinema City Glilot, Ramat HaSharon. In addition to food, there will be food for thought provided by the preeminent Professor Jeremy Phillips, who will provide some insights on recent world-wide IP Developments, taking his title from Kohelet (Ecclesiastes):

“A time to sow and a time to reap”.

The event will be a party, not a sales pitch. We won’t be giving out literature (and request that competitors don’t either). I won’t even blow my own trombone.

When? 4 PM – 6 PM on October 1, 2014,

Where? Cinema City, Glilot

Academics and associates, competitors, colleagues, commissioners and clients, friends and family, lawyers and litigators, examiners and judges are all welcome.  However, we do need an idea of numbers, both for refreshment quantities and so that we select the appropriate cinema theatre (movie theater for those requiring translation), so we do request that people register here.


Submitting Corresponding European File Wrapper In Israel Patent Opposition Rejected on Procedural Grounds but Decision Overturned by Court

August 18, 2014

tangled web

DSM filed Israel Patent Application Number 142789 for high directional - fibers. The patent claimed priority from Dutch Patent NE 1010413 from 28 October 1998. The patent covers the fibers themselves and both ropes and anti-ballistic equipment fabricated from the fibers.

The Application issued under Section 17c, based on the corresponding United States Patent No. US 6,916,533 and published for opposition purposes in April 2006. DSM also has a couple of corresponding European patent applications. One was rejected and the other, EP 113828, was allowed but with narrower claims.

Mifalei PMS Migun (PMS Protection Factories) filed an opposition which was heard by Adjudicator of IP, Ms Yaara Shoshani Caspi. The opposition proceedings included a hearing on 28 and 29 June 2011, during which the Opposer requested to submit the file wrapper of the corresponding European case, but Ms Shoshani Caspi refused to allow this to be entered. On 17 October 2013, the Adjudicator upheld the patent and rejected the opposition. The Opposer has appealed this decision, particularly the intermediate decision not to allow the file wrapper of the European case to be submitted.

The Appeal

The Opposer filed a long-winded and detailed Appeal that claimed that in addition to factual errors and illogical conclusions regarding novelty and inventive step, the arbitrator also erred on legal principle. Specifically, the Arbitrator did not give sufficient weight to the fact that the Applicant had not made the European file wrapper of record, contrary to the duty of disclosure and the obligation of equitable behaviour. Specifically, the Applicant did not make the fact that one European patent was refused and one was significantly narrowed, concealed a graph and failed to provide an English translation of a Japanese patent cited as prior art, merely providing the Japanese original.  Accepting the case under Section 17c without considering the other family members and applying technical discretion was considered unacceptable, as it transferred the burden of proof to the opposer. Furthermore, the Opposer claimed that the standard of proof that the arbitrator demanded was beyond reasonable doubt rather than simply the burden of evidence generally required in civil procedure. The Opposer challenged the patent office for failing to examine the patent, and for simply relying on the US patent under Section 17c.

The Opposer claimed that when requesting allowance under Section 17c, the applicant should have proactively submitted all corresponding cases, and referred to District Court ruling on the issue.

The Patentee’s Response

The respondent (patentee) argued that the arbitrator had given a detailed and reasoned ruling based on factual and professional issues that the courts didn’t generally consider on Appeal. As to the graph, it was considered irrelevant to the adjudicator’s upholding of the Novelty and Inventiveness of the Application. The patentee rejected the claim that the duty of disclosure required submitting English language translations of all references, unless requested to. The Existence of corresponding European patent applications was alluded to in the file wrapper of the Israel application. Once allowed under Section 17c, there is no longer an ongoing duty of disclosure.

The patentee argued that the appeal was not one against the intermediate ruling concerning the European file wrapper. The appeal was only against the final decision from October 2013. The Patentee considered that the time to appeal intermediate rulings had long past. Furthermore, amending the statement of appeal was insufficient, since this was a separate appeal on the decision, not on intermediate rulings, and a request to amend the ruling was first raised in a hearing in April 2014.

The appellant countered that the original hearing had mentioned the intermediate ruling as grounds for appeal, both in the statement of appeal and in the Statement of Claims, and the intermediate decision was appended to the file. Case-law does not require the appeal to include the protocol. The request to amend the Statement of Appeal was not to introduce this as new material, but merely a safety precaution.

The Ruling

Under regulation 411  of the Civil Court Procedure, in addition to being able to appeal intermediate rulings after they are given, appellant may appeal intermediate as well as final rulings by right when appealing after the final ruling issues. Respondents (Patentee’s) claims that the appeal does not relate to intermediate rulings is not accurate. Point 76.2 of the Notice of Appeal notes that the adjudicator erred in failing to allow the European file wrapper to be entered into the Opposition. The fact that she did not give sufficient weight to the European patent office’s conclusions is mentioned earlier in Point 7.5. Reference is also made in Point 12 and Point 43. This was also fleshed out on 19 March 2014 in Chapter 3(6) of the main claims.

On examining the protocol, this intermediate ruling does not appear under the heading Decision or Ruling. It is scattered over 13 pages of protocol and is not detailed. It seems that the arbitrator was simply over-whelmed with the amount of material submitted. It is only in the final ruling that the decision not to allow the introduction of the European file wrapper is first discussed formally with legal support and so it is reasonable to appeal it when appealing the decision as a whole.

Filing the protocol regarding the intermediate ruling only on 28 Feb 2014, is somewhat unacceptable in that it contravenes Regulation 419(1) of the Civil Procedures. The appellant’s statement that they do not need to submit intermediate rulings and protocol is problematic and they should have submitted it. Nevertheless, since the protocol does not clearly state this as a Ruling or Decision, this flaw may be dealt with when awarding costs.

Citing the Regulations, the Judge noted that the court has the discretion to allow the Statement of Appeal to be amended at any time, awarding costs if necessary, so there was nothing inherently wrong with the appellant’s request to amend the Statement of Appeal. Indeed, contravening the procedural regulations does not disqualify a case in and of itself.

Judge Judith Schitzer was prepared to allow the protocol to be entered and the intermediate ruling to be appealed, despite procedural flaws, and went on to relate substantively to the issues raised by the European file wrapper.

The Arbitrator justified refusing to allow the European file wrapper to be considered on three grounds: the timing, failure to submit an affidavit and a suspicion that the respondent would not be able to cope with the new evidence.

In the ruling, Judge Schitzer  determined that the Adjudicator Ms Shoshana-Caspi should have considered the timing, the relevance of the material in reaching a true and just ruling, the damage to the parties if additional material is allowed to be considered, and whether the other party has the ability to relate to the new evidence.

As to the timing, the Opposer wished to introduce the additional material during the evidence stage and not after this stage was concluded. The Opposer requested to confront the expert witness of the Applicant with the European file wrappers. The Applicant countered this request by claiming that the new evidence should have been submitted at the evidence stage and not during cross-examination of the witness. If there was a delay here, it was a relatively minor delay, and is not comparable to submitting evidence after the evidence stage is closed, or during an Appeal. Citing Gabai vs. Aminach, Judge Schitzer noted that in patent appeals, the appellate court has wider jurisdiction than in other appeals and can hear new evidence if required to in order to get to the truth. How much more so (a fortiori) should the opposition proceeding by prepared to hear new evidence if it will help to clarify whether or not an invention is patentable.

Where one corresponding European patent is cancelled and one is severely narrowed, there is a prima facie basis to assume that the assumption of validity at the basis of a Section 17c allowance is suspect, and the Opposer should be able to have the evidence considered. Furthermore, the European file wrapper is not a surprising piece of evidence. The Applicant mentioned the corresponding European case, albeit laconically and possibly with insufficient detail, but nevertheless, should not be surprised by its inclusion; particularly as DSM was the applicant in Europe. In the circumstances, the European case should have been considered in attempting to do justice. The attempt by the Adjudicator to manage the case efficiently and smoothly is understandable but should not come at the cost of reaching a just conclusion, and the late stage at which the European file wrapper was submitted can be grounds for adjusting costs.

The Judge then cited from a pertinent Supreme Court ruling (1297/01 Michaelowich vs. Clal Insurance LTD) and noted that in patent cases there were a fortiori grounds to be even more lenient.

Furthermore, in the Statement of Case, the Opposer stated that they would refer to corresponding file wrappers, so the Applicant had plenty of time to prepare themselves.  The judge refrained from ruling whether or not the applicant should have been more open in acknowledging the European case. Suffice to say, that when it did come up, they should have related to the issues of novelty and patentability instead of fighting to prevent it being considered.

Judge Schitzer went on to note that the patent regulation 63 actually states that after the end of the evidence stage the parties cannot submit additional evidence without the permission of the Commissioner, implying that prior to the end of the evidence stage they can submit additional evidence, and even after this stage, the Commissioner has the discretion to allow such additional evidence to be submitted and should apply judicial consideration wisely instead of narrowly relying on procedural grounds. Further evidence to this wide discretion was found in Regulation 72.

As to the lack of an Affidavit, the Judge noted that if Ms Shoshana Caspi had felt the need for one, she could have asked for it, but not all evidence actually requires affidavits. Some evidence is self-evident and can be considered on its merits. Indeed, the Opposers raised this issue themselves, stating that the file wrapper speaks for itself.

Since, as ruled in 6837/12 Merck Sharp & Dohme Corp. it is preferable for the specialized courts to consider the issue of novelty and patentability, Judge Schitzer referred the case back to the Adjudicator to consider patentability of the claims in light of the European file wrapper.

In conclusion, Judge Schitzer stated that she was refraining from addressing the issue of novelty and inventiveness head on and also was leaving it to the arbitrator to decide whether or not an affidavit was warranted, and if so, to indicate to the parties what the affidavit should include.

Nevertheless, since the Opposer (the appellant) was responsible for the procedural irregularities, despite accepting the Appeal, she awarded costs of 15,000 Shekels against the appellant.

Civil Appeal 34029-01-14 Mifalei P.S.M Migun vs. DSM, Judge Judith Schitzer of Tel Aviv District Court, 12 August 2014.

COMMENTS

I suspect that the judge’s last remark regarding affidavits was tongue-in-cheek. Indeed I have been fighting the Israel Patent Office regarding the need to supply affidavits to support self-evident facts.

The Judge is correct in her analysis and there is a moral here, in that with patent issues it is neccessary to prefer substantive arguments rather than to have awkward material dismissed on procedural grounds.

Somewhat ironically, three days before this decision issued, Ms Shoshani -Caspi ruled against admitting evidence in a second opposition between the same parties!

 

 

 


Why Are There so Few Women Inventors?

August 17, 2014

Mothers of Invention

In previous blog postings, I’ve mentioned Dr Shlomit Yanisky-Ravid’s book “Intellectual Property at the Workplace: Theoretical and Comparative Perspectives”. However, I have not published a review on this blog yet, since I have had a peer-reviewed review accepted by the Oxford Journal of Intellectual Property Law and Practice. Once this publishes, I will link to it and make some additional comments.

There is, however, one chapter in the book that deals with women inventors, or rather the lack of them. the chapter is weakly connected to the rest of the book since the author suggests that the fact that most inventions are filed by companies exasperates the problem. However, the empirical evidence that she brings actually indicates that there are almost twice as many named women inventors of company inventions than there are of privately filed inventions. In other words, the evidence goes against the hypothesis. The chapter on women inventors is structurally different from the rest of the book in that it includes graphs and statistics. As it is really a different subject from the book as a whole, I am blogging some comments now.

The book as a whole, and the chapter on women inventors, like so many other pieces of scholarship, reflects the author’s personality and values. Dr Yanisky-Ravid is a passionate advocate of worker’s rights and also of women’s rights. The extensive footnotes use the plural of the verb to see ראו, since the singular form ראה is masculine, and we can’t have that can we? She uses the double-barreled name favoured by women lawyers, where her family named is added to that of the husbands or her man as she calls him, using the term אישי – Ishi or ‘my man’ in the dedication, rather than the historically correct term בעלי – ba’ali which means ‘my husband’, but has connotations of ownership since it is linked to the word בעלים (ba’alim) meaning owners, and בעלות (ba’alut) meaning ownership. In this, the author is actually preempted by Hosea.

The author posits that, as with other types of property law, inherent biases cause an inequitable division of resources that further entrenches inequalities. She notes that over the five-year period from 2000 to 2005, only 1.9% of patentees receiving Israel patents were women, 30% were men and the rest were companies. With regard to employee inventions, 13% of named inventors were women and 87% were men. This is understood as showing that women more often invent as part of teams, but are rarely at the narrow apex of the pyramid. The author cheerfully notes that her analysis does not directly prove the source of the discrimination. Nevertheless, a feminist approach to IP rights is presented, the book purporting to address the legal and other structures that exclude women from owning IP rights.

The author considers that property rights per se have been under-analyzed from a gender perspective and that the traditional patriarchal society has defined property in a way that favours men. The situation in IP in general and patents in particular is seen as an extreme example of this built-in discrimination. Citing McKinnon, Gilligan and Fisk, the author reaches the radical conclusion that the fact that women are not often named as inventors is proof that the legal system, the definition of patentable subject matter and the concept of ownership inherent in the concept of intellectual property as property all discriminate against women. The biases in patent law that result in this discrimination are not apparent, but they would not be expected to be discernible since they are so deeply entrenched. Bias is not, however, purely a masculine aspect of IP law. Other sectors of society are under-represented amongst inventors and owners of intellectual property and these similarly show that the system is biased. Affirmative action is proposed. Specifically, there should be a minimum quota of female examiners in the Israel Patent Office and in government entities. Forcing commercial companies to employ women in R&D is also suggested, but not stressed. She toys with the idea of widening the definition of inventor to include research assistants, lab workers and junior staff.

In the years studied by the author, there were, according to her research, actually more female examiners than males. This makes the minimal quota idea a little odd. there is also no explanation on how a minimal number of women examiners would increase the number of women inventors. The hypothesis is based on the assumption that there is some bias by examiners. Personally, I don’t think that examiners of either sex pay much attention to the gender of the inventor. This is something that could be tested though. It is certainly possible to compare the relative proportion of patents examined and patents allowed where the inventor is male or female and the examiner is male or female. Dr Yanisky-Ravid doesn’t bother. She simply makes wild, unsubstantiated hypotheses and suggests ways to improve the situation. As an empiricist, I find the approach disturbing.

In the English overview we find a paragraph opening with the sentence: An important principle that arises from the consideration of the different theories focuses on the stage during which an employee transfers rights to her employer.

Why, where according to her own statistics, very few inventors are women, does she relate to her employer?

Dr Yanisky Ravid’s position is that the evidence that women are not often named inventors of patents proves that the patent system discriminates against women. I don’t see a gender bias in the Israel Patent Law 1967, as a document and to be fair, neither does Dr Yanisky-Ravid. She deduces the subtle and insidious bias from the fact that women are not inventors and the net result of men inventing does not fairly redistribute wealth between the sexes. It is, however, certainly true that women are certainly under-represented as inventors. In 15 years of very broad practice, drafting thousands of patent applications, I’ve met five women inventors, and three of those were in clothing related fields (including the inventor of seamless knickers, which is a patent I wrote for Delta and had allowed without office actions. Arguably it is one of  the better inventions I’ve worked on). Can the lack of women inventors be fairly attributed to discrimination? I am not convinced.

I have no doubt that in the past women have been discriminated against in some respects, and this discrimination included the moral right seen as part of copyright in the continental system. However, as far as copyright is concerned, the world has come a long way since Mary Ann Evans adopted the name George Elliot and Anne Brontë wrote under the pseudonym Acton Bell. A strong case can be made that Rosalind Franklin, Lise Meitner and particularly Jocelyn Bell Burnell should have received Nobel Prizes together with or instead of their male associates.

There are some market forces that discriminate against women but I am less certain than Dr Shlomit Yanisky-Ravid that the paucity of women named as inventors on patents is mostly the result of their contributions being unnoticed, of fewer women studying science, or of women being less likely to be able to burn the midnight oil and more likely to accept 9:00 to 5:00 jobs, and to seek part-time work to bring up children and to cook and clean for their significant others.

I think my aunt who was brought up in an egalitarian and very left-wing secular Kibbutz was closer to the truth when she once told me that she thinks that, left to women, we’d still be living in caves — albeit, nicely furnished ones with well swept floors. Men are, by nature, conquerors who are programmed to improve their lot, and women are naturally home-makers who are programmed to make the best of what they have. This programming is, I believe, nature, not nurture.

I don’t accept that the IP field discriminates merely because there are fewer women inventors than men. This is not an argument that my scientific and legal training, or my British and Jewish education, considers intellectually robust. This apparently won’t bother Yanisky-Ravid since she no doubt considers these as symptomatic of the pro-masculine bias of my education. I am missing her point. We are on different wavelengths.

I am reminded of the scene in Life of Brian where the members of “The People’s Front of Judea” are sitting in the amphitheatre.

Stan: I want to have babies.

Reg: You want to have babies?!?!

Stan: It’s every man’s right to have babies if he wants them.

Reg: But … you can’t HAVE babies!

Stan: Don’t you oppress me!

Reg: I’m not oppressing you, Stan. You haven’t got a womb! Where’s the foetus gonna gestate? You gonna keep it in a box?

At an event in Bar Ilan University a few years back, Dr Yanitzky-Ravid suggested that the patent field should be widened to non-technical inventions to be fairer to women who were generally less technical. In her latest book, that particularly idea is not discussed. It seems that she has thouht better of it.

I started my comments by noting that the author is unhappy with using the word בעל (Baal, as in the male Canaanite god, baal z’vuv literally Lord of the Flies or Belzebub) for her significant other of the male gender since the term implies ownership – think of connection between husband and husbandry. I realize now that I’ve misunderstood: what Yanisky-Ravid objects to is the use of the term baalut – בעלות meaning ownership, since it implies masculinity.


Trade Secrets in the Employer-Employee Relationship

July 21, 2014

forum shopping

In Israel, workers have freedom of occupation and can change jobs or set up their own businesses and may compete with their former employers. The work relationship often exposes the employee to trade secrets. Ex-employees are obliged to maintain confidentiality with regards to trade secrets and cannot compete with former employers by using such secrets. But was a legitimate trade secret?

Work related disputes are dealt with by the Labour Courts, but what establishes the employer-employee relationship?

Nissim Versano appealed an interim Decision of the Tel Aviv District Court given by Judge Ginat to refer the case to the Labour Court to decide whether or not there was an employer-employee relationship. Judge Amit of the Israel Supreme Court refused the Appeal.

On 25 March 2014, Nissim Versano filed suit in the Tel Aviv District Court, claiming that for a number of years he has been involved in the tobacco industry, and has developed contacts with a number of parties in the field. He claims that he took Moshe Ninio into the business as a partner, with a verbal agreement that Ninio wouldn’t use acquired knowledge against the wishes of Versano.

Versano claimed that Ninio set up a competing shop with similar design, stock and prices to Versano’s and that this created a situation of passing off, Unjust Enrichment and theft of trade secrets.

Ninio claimed that he was an employee of Versano and not a partner. He claimed that the District Court was thus not the correct forum to hear the case which should have been filed in the Tel Aviv Labour Court, and requested that the case be thrown out as not within the jurisdiction of the Tel Aviv Court. To substantiate his case, Ninio appended three salary slips testifying to him being an employee.

Judge Ginat of the Tel Aviv District Court referred the case to the Tel Aviv Labour Court to rule on the issue of whether there was an employee-employer relationship, and Versano appealed this referral.

Versano claimed that the District Court should decide whether it was competent to hear the case and, if not, should refer it.

The Supreme Court ruled that Ginat should either hear the case, refer it or throw it out. In other words, he should have ruled on whether or not it was a labour related dispute, and not referred that decision to the Labour Court. Cases cannot be batted back and forth.

However, the appeal was thrown out. The appellant should have appealed by right instead of requesting right of appeal. If a case is heard by District Court instead of by the Labour or Rabbinical tribunals, there is a right of appeal. However, if a case is transferred to a tribunal, one should appeal immediately.

The Supreme Court could use the Request for Right of Appeal as grounds to rule substantively on the Appeal, but did not see fit to do so.

The issue is a partial transfer, which is correctly seen as an interim decision and therefore there are grounds to file an interim appeal.

The Supreme Court related to a case transferred to the Rabbinical Court by a woman claiming financial support on the grounds of having acquired status of a wife by having had intercourse with a man in a manner establishing common law wife status as being an example of an interim decision that could be appealed, but ruled that in this case, the claim of employee – employer relationship should be heard by the labour tribunal who not only have sole discretion to hear labour disputes but also to rule on whether there is an employer-employee relationship.

Furthermore, cases concerning trade-related disputes having an employer-employee aspect are in the sole jurisdiction of the labour court. Trade secret related cases are also the sole jurisdiction of the labour court if there is an employment aspect to the case.

Once transferred to the Labour Courts, cases should stay there rather than be transferred on.

Appeal to Supreme Court  3930/14 Versano vs. Ninio, by Judge Amit, 26 June 2014

COMMENTS

Having one court only being the correct forum for hearing a case prevents ‘forum shopping’. This decision is likely to have repercussions on employee compensation for patents as well as for trade-secret issues. Many companies might be less than happy with this, since the Labour Courts are seen as being pro-employee. With the Iscar case (Plony vs. Company) on appeal to the Supreme Court, this could get interesting.


What Happens When One Party of a Jointly Owned Application is Not Interested in Continuing with Examination?

July 7, 2014

Three parties: CNRS, University of Pierre and Marie Curie, and the Centre Etudes et de Valorisation des Algues, Ceva filed a national phase of FR2011/051384 into Israel as IL 224677.

On three separate occasions, the Centre Etudes et de Valorisation des Algues, Ceva indicated a lack of interest in the European and Israeli applications being examined. In the circumstances, the other two parties applied to continue prosecuting under Section 25, with their request supported by a statement from Ludovic Hamon the VP of CNRS.

RULING

In cases of multiple owners, Section 25 allows for a jointly owned patent application to be prosecuted in accordance with the desires of only some of the parties, but the Commissioner will only abandon an application or patent at the request of all of the parties.

Section 25 has not been clarified by the case law, and the accompanying explanation to the Law from prior to its legislation, does not relate to this section.

The Deputy Commissioner suggests that the purpose of the Law is so that a pending application may be moved forwards without agreement of all parties, so long as they are all kept in the picture.

In this case, despite the disagreement on ownership, two of the applicants are willing to the prosecution of the application without the involvement of the third party.

Since the Commissioner cannot see how the third party can lose from this, she ruled that examination should continue, with the third party being informed of developments.

Whereas all applicants may submit for an application to be abandoned, there is apparently no mechanism for one applicant of many to disengage himself from the examination process. Consequently, the Deputy Commissioner suggests that she should act as per the Law of Chattels. However, without clear indication from the third party that they are relinquishing all rights in the application she is unwilling to do more than simply to follow advice of the other parties.

Ruling, Jacqueline Bracha, 30 June 2014

COMMENT

This type of case could get very messy. Any of the joint owners can license the patent if allowed. Where parties are jointly owned, one should try to have clear contractual obligations in place. In this sort of case, ideally the interested parties should try to buy out the rights of the disinterested party.


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