Combining Similar Proceedings

November 19, 2014

combining hearings

C.T.S. LTD filed Israel trademark application numbers 2253382 and 253359 “Lactofil” and לקטופיל. The Mark covers Cosmetic preparations namely lotions, creams, mousses and soaps for nourishment and cleaning of the skin and face all in Class 3. “” Laboratorios Genesse, S.L. opposes the marks

Meanwhile, Laboratorios Genesse, SL. has filed Israel trademark application number 249389 for Lactivit for Soaps, gels, perfumery, essential oils, cosmetics, lotions for hair and skin care, creams for hair and skin care, and dentifrices also in Class 3. C.T. S. LTD are opposing this registration.

Both parties propose combining the hearings. The Lactofil hearing was scheduled for 29 October 2014.

The legal issue in both cases is likelihood of confusion with the similar product of the other party. The parties and the issues in both cases is the same. Combining the cases saves the parties time and expense, and saves judicial resources. In one case there are additional claims of inequitable behavior, but this is not seen as sufficient justification to hear the cases separately.

As both parties have equal rights, Ms Yaara Shoshani, Adjudicator at the Israel Patent and Trademark Office ruled the cases are to be combined, however in each case, at the combined hearing, the Opposer has the right to cross-examine the applicant’s witnesses and only then may the Opposer’s witnesses be cross-examined.

In the circumstances, no costs were awarded.

Decision to Combine Similar Trademark Proceedings, Yaara Shoshani Caspi 6 October 2014. 

COMMENT

Apart from the parties in question, there is a third party of importance, i.e. the public. It seems to me that combining the proceedings is not only economical for the parties and for the public purse in terms of judicial expense, but also is most likely to result in a sensible ruling.


Naomi Ragen Found Guilty of Plagiarism Again

November 17, 2014

Sacrifice   marriage made in heaven

On 11 November 2014, Judge Oded Shacham found Ms Naomi Ragen not guilty of Copyright infringement on a technicality, but nevertheless guilty of infringing the moral rights of another author in a book that she wrote that was ruled as plagiarizing a short story by the other author, a Ms Cynthia Rosengarten (now aged 82). The request for an injunction was denied. The damages awarded were 60,000 Shekels, which was rather less than the 2.5 million shekels requested in the statement of case.

Background

The plaintiff, Ms Cynthia Rosengarten published a short story entitled “A Marriage Made in Heaven” in an anthology of short stories written by various Hareidi (Ultra-Orthodox) women, that is titled: “Our Lives, An Anthology of Jewish Women’s Writing” which was published in 1991. The anthology was edited by Sara Shapiro.

Ms Rosengarten claims that the story is autobiographical and relates to the marriage match of her eldest son. The story is a 15 page personal account of her dealing with match-makers, and how, as a mother, she felt when a girl from Boro Park was suggested as a suitable match for her 18 year old son. On one hand she is aware of the need for her son to get married, but on the other hand, she considers all the potential brides inadequate. The story reflects reality in the Hassidic world.

Ms Rosengarten sued Ms Naomi Ragen and Keter Publishing LTD, claiming that Ragen’s best-seller “the Sacrifice of Tamar” which was published in 1997 includes elements from “A Marriage Made in Heaven” and infringes both commercial and moral rights therein. Ms Shapiro was mentioned as a formal plaintiff.

The Sacrifice of Tamar tells the story of Tamar Feingold, who grew up in an Ultra-Orthodox neighborhood of New York, and relates her internal conflicts with the community in which she lives.  Two years after getting married, Tamar Feingold is raped by a black (that is, African American – not Hareidi) rapist whilst staying with her sister. Later that night, Ms Feingold sleeps with her husband and hides the trauma she went through. She becomes pregnant and is unsure which is the father of the child. Chapters 1 to 22 of the book relate to the feelings of Tamar through the pregnancy, where eventually a white skinned child is born.

In Chapter 23, the son asks his mother to help him find a life match.  The son gets married and a year later his wife has a black skinned baby. The son accuses her of unfaithfulness and Tamar has to come clean about the rape. The son’s marriage dissolves and Tamar, the grandmother, adopts the grandson and leaves the Hareidi fold.

According to the Statement of case, Ms Ragen used parts of “A Marriage Made in Heaven” in Chapter 24 of her novel, thus violating the Copyright and Moral rights of the plaintiffs. They claimed damages and also requested an injunction.

Ruling

Because of the time-line, the ruling was given under the old Copyright Regulation of 1911 and not under the new Copyright Act 2008, but, considering the infringement as on-going, eventual damages took into account the statutory damage regimes under both law.

In the ruling there is a lot of discussion as to whether the copyright was actually transferred by Ms Rosengarten to Ms Shapiro and that it wasn’t transferred to the printing house. No assignment document was forthcoming. It was alluded to and was probably filed somewhere but was not produced.

Judge Shacham ruled that the copyright in “A Marriage Made in Heaven” belongs to Ms Shapiro and consequently the plaintiff Ms Rosengarten does not have grounds for financial Read the rest of this entry »


Israeli and Canadian Patent Offices to Cooperate via the Global PPH instead of via a Special Dedicated PPH

October 29, 2014

israel canada

The Israel Patent Office has announced that since November 1, 2012, the Israel Patent Office (ILPO) has conducted a Patent Prosecution Highway (PPH) pilot program with the Canadian Intellectual Property Office (CIPO) in order to improve patent examination procedures in these countries and make them more efficient.

On January 6, 2014, the ILPO and the CIPO joined the GPPH (Global Patent Prosecution Highway) pilot arrangement, aimed to simplify and improve the existing PPH programs, and coordinate between all the countries participating in the program through a single arrangement.  The GPPH pilot allows patent applicants to request accelerated examination at any of the offices involved in the pilot, if their claims have been found to be allowable/patentable by any one of the other offices involved in the pilot.

Under the GPPH pilot, a request for accelerated processing can be based on work products, including PCT work products, providing the eligibility criteria of Framework Provisions for the GPPH are met. Since the guidelines of the GPPH pilot take precedence over those of the existing bilateral arrangements, and since both countries are participants in the GPPH pilot, the ILPO and the CIPO have decided to continue their cooperation through the GPPH pilot arrangement.

COMMENT

Obviously the Israel  Patent Office has to publicize these agreements.  I try to publicize Israel related IP news, which this clearly is. However, I really don’t know if this is significant. Does it matter if applications are accelerated as the result of a global or a local agreement? Will applications be subjected to more or less screening as a result? Will prosecution be more efficient? I really don’t know.

One thing is certain, the metaphor of highway is singularly inappropriate when considering the scale of Canadian roads when compared with those in Israel.


Astrologist Successfully Sued for Copyright Infringement of New Card Designs – She didn’t see it coming

October 20, 2014

Astrological cards

Zur-Klein is  an astrologist. Tal Rinkov is an artist who created 37 cards for the Astrologist in accordance with an agreement between them which, inter alia, related to the copyright ownership.  (Ms Rinkov was also the kindergarten teacher of Ms Zur Klein’s daughter, which is how they met (some would say it was fate).

Ms Zur-Klein ordered 40 card designs for a payment  of 5000 Shekels.  The cards were to be mass-produced and distributed with an instruction manual and a teaching movie. The parties entered an agreement on 5 September 2014 that established several principles:

  1. The original artwork and the copyright of the artwork was to remain that of the artist.
  2. The artist would not be entitled to royalties for packs of cards and other goods itemized in the agreement
  3. The Astrologist would only be entitled to use the images on specific listed items
  4. All internet images  would be reproduced at a low resolution only
  5. All pictures would carry Ms Rinkov,’s signature, her name, website and contact details

Ms Rinkov was hospitalized in November of that year and only delivered 37 designs, and the last three were completed by another artist. (For reasons not apparent, the medium missed this eventuality). The images were transferred to a graphic artist who made various graphical changes to make the images more suitable for printing.

After various commercial entities expressed interest in the images, Ms Zur-Klein contacted Ms Rinkov to try to negotiate a transfer of copyright but due to a difference of opinion, no agreement to transfer the copyright issued.

Ms Zur-Klein  publicized the images in various internet sites including her own and other people’s, in her blog, Facebook page and elsewhere.  In all reproductions of the cards on the Internet, the artist’s signature appeared, but her name and contact details were not given. Indeed, on some websites, Ms Zur-Klein presented herself as the creator of the card (the term יוצרת הקלפים is used, which is both creator and manufacturer so the term is somewhat ambiguous). Furthermore, Ms Zur-Klein allowed other astrologists to use the designs without giving any credit to Ms Rinkov. There was also a newspaper article featuringMs Zur-Klein that was illustrated with one of the card designs that was also not credited.

On 6 June 2012, Ms Rinkov sent Ms Zur Klein a Cease & Desist letter.

The basis of the ensuing court case was the agreement signed by the parties. It is translated below:

Tal prepares for Carni 39 pictures, which together with the picture already executed, provides a set of 40 pictures for cards and other purposes – payment 5000 Shekels.

Apart from the payment for the work, there will be no other royalties for selling packs of cards, books, CDs and other astrological items depicting the images of Tal Rinkov.

The astrological products that Karni is allowed to use the pictures on are: packs of cards, books, audio CDs, video for watching, a banner for a website, business cards and other articles on authorization from the creator. Karni may not manufacture or distribute artistic works such as pictures, mugs, key-rings and the like.

All material displayed on the Internet are at low pixel count.

The name, website and contact details of Tal Rinkov will appear on all products, including future products.

The pictures on the cards and elsewhere will include the artist’s signature.

The original artwork and copyright remains the exclusive property of Tal Rinkov.

Pictures and associated artistic products (that are not astrological) will be produced and distributed exclusively by Tal Rinkov.

Any deal that Karni creates for Tal will generate a 20% commission for Karni.

When Tal sells a product (book, CD, cards and the like) she will profit 20%. Tal will receive a present of a pack of cards.

 According to the plaintiff, the defendant wrote the contract after the negotiations. The defendant claims, however, that the contract was the plaintiff’s idea, and that the plaintiff had written most of the clauses to the detriment of the defendant, such as her not getting benefit from sale of the cards. However, the defendant agreed that she had printed out the agreement.

The defendant claimed that she was entitled to the status of co-creator in the cards as although Ms Rinkov executed the artwork, it was to her, Ms Zur Klein’s specification regarding the symbolism, colors and charms. The plaintiff considered this a change of direction in the defence and objected to it on principle.  The judge ruled that the claim that the defendant hand guided the artist appears in clause 31 of the defence, but is more a factual than a legal defence and so she was willing to contemplate it. The plaintiff countered that Carni Zur-Klein had not, in fact, instructed her, but that she herself had researched the elements and colours.  Both sides supported their contentions with emails and other evidence. It does seem that the astrologer gave guidelines for the design, but these are by way of astrological knowledge rather than artistic input.

RULING

In this instance, Judge Lemelstrich  did not consider that under section 1 of the Copyright Law 2007, the two parties could be considered co-owners of a joint creation. Section 64 creates a rebuttable assumption that the artist is the creator and each card design was signed by Ms Ronkov as the artist.

Section 5 of the Copyright Law notes that the idea, way to implement and facts are not copyright protected, only the  artwork itself is. According to Section 35a of the Copyright Law, a work for hire is the property of the artist in the first instance, unless otherwise agreed implicitly or explicitly. In this instance, both the Copyright Law and the contract  support the artist as owner of the copyright.

In the packs of cards, Ms Rinkov is acknowledged as the artist and Ms Zur-Klein is credited as an astrologer.

The parties agree that Ms Zur-Klein conceived the project, but the copyright in the images remain the property of Ms Rinkov.

Ms Zur-Klein apparently sold some 80 packs at 190 Shekels a pack.

the main issue sees to be the internet reproductions which do not provide the details of Ms Zur-Klein.

The ruling now relates to various astrological websites. Since I find this subject matter morally, ethically and religiously abhorrent, I am refraining from reproducing the links.

The important thing is that Judge Lemelstrich considers that the artist’s moral and financial rights were compromised in numerous infringements in various websites and internet campaigns. That said, the pictures on the Internet were not reproduced at a quality to enable them to be printed and used as playing quality cards.

The changes to the designs for subsequent printing by a graphic artist under the direction of Ms Zur-Klein were minor. These were considered insufficient to create a change to the copyright, in that the original work could not be considered defaced or the artist’s moral rights compromised. Nor did the amendments constitute a copyright protectable creation.

Ms Rinkov claimed 100,000 Shekels in statutory damages for copyright infringement and a further 100,000 Shekels for moral rights infringement, particularly noting the long and arduous legal proceedings and the multiple infringements.

Judge Lemelstrich noted that despite entering a clear contractual relationship to the contrary, Ms Zur-Klein acted as if the creations were hers to do what she liked with. She ruled 35,000 Shekels damages for infringing the moral rights, 15000 Shekels for infringing the material rights and a further 5000 Shekels for an article published after the Cease and Desist letter.

Judge Lemelstrich of the Haifa District Court ruled a permanent injunction against Ms Zur-Klein, her delegates, substitutes and others from performing any action that violates the September 2011 agreement or other rights as per the statement of case.

Ms Zur Klein will compensate Ms Rinkov 55,000 Shekels for copyright infringement, an also will pay 15000 Shekels legal fees. The money will be paid within 30 days.

Civil Ruling 15824-10-12 Tal Rinkov vs. Carni Zur-Klein, Haifa Court before Judge R. Lemelstrich, Ruling 13 October 2014

 

 


On Ethics and Legal Ethics

October 6, 2014

legal ethics

It was Groucho Marx who quipped that military intelligence is a contradiction in terms. I don’t know who it was that first pointed out that the dictionary lists human intelligence, animal intelligence and military intelligence in that order. I heard it from an uncle.

Similar remarks could be applied to legal ethics.

There is a lot of discussion by philosophers on the difference between law and ethics. There is a concept called Legal Ethics. This is really a type of law applying to lawyers. It should be considered as minimum legal standard of behaviour not as the standard at which the lawyer is behaving ethically.

I got to think about this following Professor Phillips lecture “A time to sow and a time to reap” that he generously gave at our PCTea Party last week. Jeremy quoted  Mr Justice Birss’ ruling in a UK case where a patent attorney was sued for giving poor advice. In the case in question, Baillie & Others v Bromhead & Co (a Firm) & Others [2014] EWHC 2149 (Ch), 2 July 2014, at para [333], Judge Birss stated:

“Although I find for the defendants in this action, [the defendant patent attorney] should not regard this as a vindication of his professionalism. A number of the claimants’ criticisms … were well founded. The action has exposed inexplicable and negligent advice given by him. …”

What the judge is doing is stating that one can avoid legal culpability but still behave unethically. This concept is also discussed in the Talmud, where the concept of being a נבל ברשות התורה is discussed. Over and above specific regulations and commandments, Judaism has a catch all obligation to ‘be holy’, because the Lord is holy.

For a good paper on legal ethics, see “Moral Philosophy’s Standard Misconception of Legal Ethics1984 Wis. L. Rev. 1529 (1984) Schneyer, Ted

In this country, the Israel Law Bar seems to be mostly concerned with appropriate forms of advertising and dress. These issues are to separate the lawyer from the layman and to create a hallowed aura around lawyers. There is little that addresses professional ethics.

The (voluntary) code of conduct of Israel patent attorneys that was drawn up by Dr Kfir Luzzatto has a lot of good in it, regarding not criticizing colleagues, but only specific work products, and not taking over a case without checking that there are no open debts to previous representatives. These issues are important, but also only part of it. There is a need to treat clients and workers properly and to explain to clients what future costs are likely to be incurred.

I’d like to arrange a conference on business ethics for patent professionals. Anyone interested in attending such an event, please let me know.

Another of Jeremy’s slides had the following text:

  • Whatever you do with your IP – and this includes doing nothing – is a business decision and should be based on the same criteria as any other business choice
  • The vast majority of IP practitioners have insufficient and/or inadequate training and experience to equip them to give or evaluate the sort of business advice their clients need
  • Those IP practitioners who fall into that category are often in a state of denial

I wonder how many of us agree with these sentiments? I wonder how many of us refrain from giving business advice as: (a) we are not competent to, and (b) we have an invested interest in clients filing applications and paying maintenance fees as we charge for these services.


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.


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