An overview of the Annual General Meeting of the Israel Patent Attorneys Association

March 3, 2015

zoa

Yesterday I attended the Annual General Meeting of the Israel Patent Attorneys Association. The event, as ever, was held in Zionist House of America, in Tel Aviv.

The attendance was relatively high for this type of event, with maybe 80 – 100 participants at the beginning. However, many left after the lectures and before the General Meeting.

Before the AGM part of the proceedings, there were two speakers: the Deputy Legal Advisor to the Government on civil issues, Adv. Erez Kaminitz and the Commissioner, Asa Kling.

 

kaminitz

Adv. Erez Kaminitz spoke on “Legislation, How an Idea Becomes a Statute”. Kaminitz used the metaphor of drafting a patent application and the prosecution process to illustrate the legislative process. This was an interesting analogy that didn’t quite work. What was clear was that although he obviously knew his subject and was qualified to speak on it, he didn’t understand much about patent drafting or prosecution. There was nothing new to anyone with a law degree or an interest in politics. I am not sure to what extent the material is covered in High School Civics as I didn’t study in High School in Israel, but I suspect amongst the patent attorneys present there were few who found the explanation enlightening. It seemed as though Kaminitz felt that the audience needed something that they could latch on to so that they could follow the legislative process. This is not the case. As a group, patent attorneys are highly educated and used to being exposed to new ideas. I found the analogy patronizing and unnecessary.

It seems that the elections are holding up legislation  I had intended to cast my vote on the burning IP issues, but it seems that none of the parties running for the Knesset have IP policy in their manifestos and patents, trademarks and design legislation is simply not high on the agenda of any of the political parties.

asa-kling

 

The commissioner Asa Kling spoke about transparency and partnership, and gave a sneak preview of the Israel filing and prosecution statistics for patents, designs and trademarks for 2014. The absolute numbers of new applications are very close to those for last year, which hopefully indicates that the downwards trend of recent years has flattened out.

We discovered the low level of feedback that the patent office receives when it asks for public opinion. It does appear that feedback is earnestly solicited, and I really should try to formally respond more often, and not just blog my musings.

Adv. Kling showed us various guides and other material on the website and chided us for not visiting or referring clients. He explained that attempts to provide real time information were hampered by protection mechanisms in place to prevent cyber attacks. Nevertheless, he was proud of the examiner guidelines and other material available for review and felt that the level of transparency was higher than for other government bodies.

transparency

Like many of my colleagues, I have advised clients to submit their PCT applications for International Searches (ISRs) with the Israel Patent Office, mostly because it is cheap. I have been pleasantly surprised with the results and, where the results have been favorable, clients have generally been happy. What I don’t know is whether the Israel Patent Office has done an objectively good job, or whether the EPO will find additional art that the Israel Patent Office has missed. I’ve filed national phases for cases that have ISRs from the Israel Patent Office, and am waiting to see what foreign patent offices uncover. It was fascinating to learn that the Commissioner and presumably the examiners at the Israel Patent Office are also eagerly awaiting European Supplementary Search Reports and Examination of corresponding family members to PCT applications that the Israel Patent Office has processed as an International Search and Examination Office. In other words, they have similar considerations.

I discovered that to date, the Israel Patent Office has searched about 30 PCT applications for the USPTO and, although authorized to provide a similar service to the Georgian patent office, do date, have yet to do so. 30 applications originating in the US is a number that I can relate to, as is nothing whatsoever from Georgia. It was interesting seeing the similarities and differences between our respective practices.

facebook

We discovered that the Israel Patent Office has a Facebook account which we were invited to visit and to ‘like’. It reminded me that some years ago, the EPO invited me to exchange links with them.

The committee was friendly and seemed to be actually thanking the members for coming. This was refreshing. The actual AGM business wasn’t very interesting.

We discovered that no progress had been made on setting up a website. Veteran Patent Attorney Daniel Freimann made the eminently reasonable suggestion for the organization to set up a mediation service for settling disputes between members. The idea was unfortunately ignored.

vote

All resolutions passed unanimously or at least overwhelmingly. There was only one position (that of a member of the overseer committee) which was contested. Here after some reminding, Einav Zilber, the Secretary of the IPAA, requested that those who were only trainees or otherwise not entitled to vote refrain from so doing, as should those who had submitted a proxy vote. Not overly surprisingly the candidate who won did not see the need to actually attend the meeting, and had enough proxy votes to outvote those present. One of my colleagues asked me why he’d bothered to stay for the voting, and I had no satisfactory answer for him. Perhaps one day proxy voting will be anonymous in sealed envelopes and not merely block voting by larger firms.  If this happens, I suspect that more licensed Israel patent attorneys will join the organization and take part in the proceedings.

In an attempt to provide services for patent attorneys, it transpired that the committee had made some inquiries into negotiating personal insurance plans for members. Whereas professional malpractice insurance is something that is expensive and one can see the point of the organization negotiating block rates, I don’t think that patent attorneys need to negotiate as a group for personal insurance or pension plans. Such initiatives make sense for professions characterized by large numbers of practitioners and low salaries, such as the teaching profession, nursing and social work. Patent Attorneys are a small group of high earners that are regularly solicited by insurance brokers.

refreshments

The refreshments were more than adequate comprising bread rolls with savory fillings, fruit platters, miniature muffins and biscuits, soft drinks, tea and coffee. The meeting was a good opportunity to meet ones colleagues and competitors.

Generally a successful event and Israel Patent Attorneys are invited to join.


Clip Fresh Ruling Upheld On Appeal

February 25, 2015

clip-fresh

Back in July 2014, the Israel Patent Office allowed the Clip Fresh logo mark of Farm Chalk LTD to be registered despite an opposition from earlier registered ‘Click and Fresh’ to Millennium Marketing Intertrade (1999). The Examiner considered the likelihood of confusion to be unproven. See here for more details.

Millennium Marketing Intertrade (1999) appealed the decision and the decision regarding costs (reduced from 92,932 Shekels to 80,000 Shekels) to the Tel Aviv District Court under the Right to Appeal.

They considered that despite the different appearance of the marks, when the sound of the mark is considered, there is a likelihood of confusion.

Furthermore, “By Farm Chalk” –which appears in the mark, was never actually used, rather the mark holder used the slogan “Keep it Fresh”, so the decision to allow the registration on the grounds that the words By Farm Chalk prevented confusion should be reversed.

.The Appellant argued that the F of Fresh looks like an ampersand (&) and the mark holder simply adapted their mark and was confusingly similar in appearance. Furthermore, the costs of 80,000 Shekels were disproportionate to the work involved in the opposition.

The mark holder argued that the Appeal should have been filed within 45 days and was actually filed 4 months after it issued and so should be thrown out. Furthermore, the Click and Fresh mark only issued after disclaiming the descriptive words ‘click’ and ‘fresh’ and so cannot be considered misleading the public as to the source of the goods. The costs were not much different from costs awarded in other cases and Appeals to reduce costs should only be accepted in extreme circumstances.

The appeal was filed within 45 days of the costs ruling though not within 45 days of the main ruling. Judge Yehudit Shnitzer considered that the costs of 80,000 Shekels were indeed significant and could be grounds for deciding to file an appeal. She therefore was prepared to review the case and rule on its merits.

As to the phonetic similarity, Judge Shnitzer considered that food containers are not bought by requesting the goods by brand over the counter, but by picking up and examining the goods. She therefore considered that the difference in visual aspects of the marks outweighed the similarities in sound.

Neither mark would have issued for the words, only for the stylized logo. In an appeal regarding the registration of a mark there was no room to consider whether the mark was actually used as registered, since this was a separate ground for canceling a mark after a period of time, but not within the scope of the appeal. Since the click and fresh registration only issued by disclaiming the words ‘click’ and ‘fresh’, the protection afforded by the sounds of these words is very limited.

The marks have to be considered in their entirety, with the emphasis on the visual aspects not the audible ones, and noting similarities in disclaimed words, but not giving such disclaimed words much weight.

As there are a lot of similar goods on the market, someone interested in a specific brand would be expected to take care.

It is important to prevent trademark abuse and policy dictates having to avoid trademarks providing an effective monopoly on goods having certain characteristics, rather than serving as an indication of source. Allegations of free riding, unfair competition and confusing the public were rejected in favour of free competition.

As to the costs awarded, Judge Shitzer noted that the costs were based on actual cost submissions and were calculated and not random. She accepted that there were cases with a single hearing and no witnesses from abroad where the costs awarded were much lower. She did not, however, consider the costs to be outrageous and did not see fit to interfere.

After ruling to reject the Appeal, Judge Shitzer awarded a further 30,000 Shekels costs against Millenium Marketing Intertrade (1999).

Appeal to Tel Aviv District Court 27992-08-14 Millenium Marketing Intertrade 1999 vs. Farm Chalk Investment LTD. Concerning Israel trademark opposition ruling concerning Farm Chalk’s stylized graphic mark by Asa Kling, the appeal ruling by Judge Shnitzer, February 2015    

COMMENT

This decision vindicating the Commissioner’s ruling is correct. I think that the decision also shows that Ms Yaara Shoshani-Caspi’s ruling re Humus B’Ribua is wrong.


On Blood Pressure and Diabetes. Can citations post-dating the effective Filing Date be used as evidence of what was known at the time of filing?

February 10, 2015

 

blood pressure

Israel Patent Application No. 140665 to Novartis relates to preparations including Valsartan and Amlodipine for treating high blood pressure and diabetes. The application is a national phase of PCT/EP/1999/004842 and claims priority from an earlier US patent application.

The patent was allowed and published for opposition purposes on 23 December 2012 and is being opposed by both Teva Pharmaceuticals LTD. and by Unipharm LTD.

The Opposers submitted an expert opinion from a Professor Chimlichman to the effect that the combination was known from various publications and his treatment of hyper-tension and thus were lacking novelty at the priority date.

On response to evidence by the Applicant, the Opposers submitted a second opinion in which he relied on two references that were published after the priority date to determine novelty and inventiveness at the time of the priority date. Since these publications were not prior art, the Applicant requested that they were deleted from the opinion and espunged from the record.

Professor Chimlichman claimed that his treatment before the priority date was supported by GYH Lip et al., “The `Birmingham Hypertension Square` for the Optimum Choice of Add-in Drugs in the Management of Resistant Hypertension”, Journal of Human Hypertension (1998) 12, 761-763. Whilst the publication itself was certainly published after the priority date, it relates to clinical tests using the combination of the two drugs and must have been written prior to being published and describes what the authors knew prior to the priority date.

Furthermore, a response to Lip et al. subsequently published in the same journal provides additional evidence that the combinatory effect was known

Whilst accepting that the two publications were not themselves prior art, the opposers argued that they indicated the state of the art at the priority date and should be examined on their merits and not expunged from the record. Furthermore, the additional evidence was brought in response to statements my Professor Daloph, the expert witness of the Applicant.

The Opponents cited Unipharm vs. SmithKline Beechan and Orbotech vs Camtek to support their argument that the papers should be examined on their merits.

Ruling

Opposers are limited in what they can submit in response to the patentee’s evidence. They are not allowed to widen the statement of case. In this instance the additional evidence is supplementary evidence to support their main grounds of opposition, i.e. that the combination was known. There is no evidence given to explain why these papers weren’t submitted in the original round of evidence. The Opposer submits his evidence first and is entitled to respond to the counter-evidence. This gives him a procedural advantage and allowing the submission of additional evidence that could have been submitted in the first submission unfairly disadvantages the applicant.

Comment

Although not allowed to be added to the record, as it could have been submitted earlier, this ruling does seem to indicate that such post priority publications may indeed be used to show what was prior art.


Bio Spa… Is it registerable as a trademark?

February 5, 2015

biospa 1biospa 2

Sea Of Spa Laboratories LTD. filed Israel trademark application no. 260443 for the words “Bio Spa” in Class 3 for:

Mineral bath salts and mud masques (not for medical purposes), body butter, body peeling aromatherapy cream, body cream, Aloe Vera cream, Cosmetic creams and lotions, moisturizing cream for the face and baldpate, shampoo, soap, liquid toilet soap, shower gel, toothpaste, deodorant, perfumes, after shave balm (not for medical purposes), all being produced from or enriched with minerals from the Dead Sea; dead sea water; cosmetic soaps; cream soaps; liquid soaps; perfumed soaps; soaps for body care; soaps for personal use; essential oils; Cosmetic creams for skin care; Hair care creams; Hair care preparations; Hair care lotions; Lotions for face and body care; Nail care preparations; Body and beauty care cosmetics; Cosmetic creams; Cosmetic preparations; Cosmetics; Body oils; Hair coloring preparations; Hair styling preparations; Hair shampoos and conditioners; Baby oils; Shampoos for babies; Bath and shower gels and salts not for medical purposes; Bath oils; Bath soaps; Bath foam; Massage oils; Cosmetic massage creams; Sun screen preparations; Sunscreen creams; Sun-tanning oils and lotions; Sun block preparations; Tanning and after-sun milks, gels and oils; Beauty gels; Beauty creams; Body creams; Face creams for cosmetic use; Beauty lotions; Body lotions; Skin lotions; Make-up; Cosmetics and make-up; Make-up for the face and body; Make-up removing preparations.

And in Class 35 for:

On line advertising on a computer network; on-line retail store services for the sale of cosmetics, body care products, soaps, perfumery, essential oil, hair lotions, dentifrices and deodorants; direct mail advertising.

The application was filed on 11 Nov. 2013 and was rejected by the trademark department as being wholly generic and lacking any distinctive features as far as cosmetics is concerned.

The Applicant countered that the word Bio Spa is not descriptive, but at worse, hints at the products, and also asserted that the mark had acquired distinctiveness through use and thus could be registered under Section 8(b) of the Trademark Ordinance 1972. To show the reputation acquired through use, the applicant appended a catalogue and an affidavit from the CEO attending to the scale of use.

On re-examination, the mark was again refused and the Applicant requested a hearing before the Registrar of Trademarks under Regulation 26 of the Trademark Regulations 1940. The Applicant claimed, that like magazines names Family or Good Family which were successfully registered on appeal to the courts, the mark merely hinted at the product and was not fairly rejected as being descriptive. Furthermore, the words ‘bio’ and ‘spa’  do not go together naturally, and supported this assertion with a Google print-out that showed that the combination was unique with them.

In his ruling, Deputy Commissioner Jacqueline Bracha held that the words Bio and Spa have equal weight.

Applicant argued that the word SPA does not describe cosmetic products but rather a place where one can obtain health treatments. Whilst acknowledging that this is true, the Commissioner noted that there were a plethora of cosmetic products that included the word spa and that the word was, in fact, generic to the cosmetic product industry.

The Applicant further claimed that the word BIO was used for food products in general and yoghurt in particular. The Deputy Commissioner accepted that this was true, but asserted that the word really meant natural and not genetically engineered or the result of agrichemicals.

The Deputy Commissioner was not sure that the combination was truly distinctive, but was prepared to accept the evidence that no other party had combined the words and that the phrase was borderline descriptive – indicative, and therefore was prepared to allow it to be registered on the basis of acquired distinctiveness since he product had been in continuous use since 2011, and referred to various decisions to support this reasoning. A Google image search also predominantly turned up the applicant’s products.

Ex Partes Ruling by Ms J Bracha on Israel Trademark Application No. 260443 “Bio Spa” to Sea of Spa LTD.  20 January 2015


Chinese Copycat Products not illegal and down will come baby, cradle and all…

January 25, 2015

rockabye

Dvaron Import-Export sell a baby rocker.  The products were manufactured and imported from China. Fisher Price Inc. and Mattel Inc. sued claiming copyright infringement, passing off, trademark infringement and Unjust Enrichment. They alleged that their intellectual property was infringed by the product, it’s upholstery and instruction manual which they claimed were accurately copied. Both Dvaron Import-Export and directors Aharon Stein and David Ben Shushan were sued.

The Nazareth District Court threw out the charges noting that there was no patent or design registration and that the defendants had not infringed any trademark registered by Fisher Price or Mattel. Claims for reputation and confusing the public as required for a finding of “passing off” were also rejected.

The Court ruled that copying products per se. where there are no registered rights, does not, in and of itself, create grounds for an injunction. Each case has to be judged on its merits. There is no copyright in the design of functional articles, including their form, although sometimes articles includes artistic elements that are protectable.  Copyright does not apply to rocking chairs or to their upholstery which should be protected by a design registration.

Copyright does cover instruction manuals however, as these are literary creations. However, the defends are not responsible for the contents of the instruction manual infringing the copyright of Mattel or Fisher Price as they could not know that Mattel or Fisher Price had copyright in this, and they are thus innocent infringers. The Chinese manufacturer had indeed reproduced Fisher Price illustrations but one would not generally notice this or Fisher Price logos in the images, and purchasers would only see the instruction manual after purchase.

As to Unjust Enrichment, in 5768/94 A.Sh.I.R. the Supreme court found that applying this doctrine where there is no infringement of registered IP rights requires an additional element of bad faith which, in the present instance is not found

Fisher Price Inc. and Mattel Inc. could not show a reputation in the product. The mere copying is not in and of itself an additional element of bad faith and the charges were rejected.

As the charges were rejected, the issue of personal liability of the directors was moot.

Costs of 30,000 Shekels were awarded against  Fisher Price Inc. and Mattel Inc. As to goods seized under an Anton Pillar injunction by Tel Aviv Magistrate’s Court, Judge Ben Hamu referred the parties back to that court to rule on the issue.

T.A. 39534-02-12 Fisher Price et al vs. Dvarron et al., Judge Yosef Ben Hamu, 8 January 2015.


Cyber-bullying in the Israel Patent Profession

January 12, 2015

cyber-bullying-poster

There are trends in naming patent firms, as with everything else. Sometimes, the names of the senior partners are used. When this become too long, the firm switches to an acronym. so Pearl Cohen-Zedek Latzer became PCZ”L. When they merged with a firm called Baratz, they switched to Pearl-Cohen as the acronym was a little too long.

There was a trend a while ago when firms switched to acronyms for no apparent reason. Reinhold Cohen started using the acronym RCIP, Jeremy Ben-David started using JMB, and Colb started using STC. (Confusingly, most Korean patent attorneys, and presumably a lot of Koreans who are not patent attorneys, seem to be called Lee or Kim. There is a Canadian firm called Smarter & Biggar which is at least memorable. A US firm called Nutter’s is named after a founding partner. Another founding partner was Louis Brandeis. Why they preferred the name Nutter is anyone’s guess, but I digress).

Using one’s name to trade under and as an email domain is not without the possibility of confusion. In Israel, there is a patent attorney with an independent practice called Friedman but there is also a Freiman. There are a number of Cohens practicing IP Law and possibly practicing for their hereditary Priestly duties. These include the current generation of the Reinhhold Cohen dynasty, Dr Shlomo Cohen and several others. There are at least two pairs of divorced patent attorneys where each side is entitled to continue using the name they’ve been working under and they do. There are also mothers and daughters having the same initial and family name, who each provide IP services via different firms. These practices may lead to confusion, but each party is generally considered as acting in good faith and is entitled to continue using their name.

With websites, there seem to be two trends in Israel. One trend is to use one’s own name as the basis of the domain. The other is to use a generic IP website, such as patent, trademarks, IP, and to add Israel, or I, so there is an ipatent, israel-patent, -i-copyright, , etc. or using bezeq, Israel’s phone service as the domain name, an email such as patent@bezeq, etc.

In my opinion, anyone who uses the surname Cohen on a daily basis, is entitled to use the term cohen as part of his email address. I don’t think he needs to prove that he is indeed of the priestly caste. Similarly Dr Gal Ehrlich may use his hereditary surname Ehrlich, which means honest. It is not an indication of honesty. It is merely a hereditary surname.

Terms and letters such as Israel, ‘i’ for Israel, ip, and words such as Israel, patent, trademark, copyright, are all available for any practitioner to use.

As I am interested in people coming to ME for my expertise, and don’t consider myself another flavor of 3% milk or sliced white bread, I use the name factor, although I have added the letters ip to remind people what I do.  I realize that I cannot prevent other Factors from using the name Factor, nor do I have a monopoly on ip. When the UK Patent Office launched a blog called “ipfacto” I was a little put out, as the IP Factor has been around for a decade and logged up hundreds of thousands of hits. However, I didn’t seriously contemplate legal action, despite the fact that it wasn’t just the IP or the Factor, but the combination that was copied, which does create a likelihood of confusion. There is a US patent agent active in Israel called Haim Factor. As far as we know, he is not related to me. It would be nice to stop him calling himself Factor as it might confuse clients, but he is as entitled to the name as I am. I suppose this is why we have both personal names and family names.

Recently, Advocate Meir Dahan started offering electronic filing under the name epatent.  Dahan was using epatent.co.il as a website for his services. Ehrlich & Fenster use ipatent.co.il. Dahan’s email to associates gives his name as Meir Dahan very clearly. The source of the services offered was clear. It is not confusing. As an attorney-at-law, he is entitled to provide patent services. His prices are rather low, but he is entitled to set his fees at whatever value he feels is appropriate to his level of service and competence.

Nevertheless Dr Gal Ehrlich of Ehlich & Fenster sent letters to their contacts informing them that there was no connection between Dahan and their firm and announced that they had initiated legal action against him. Dahan was using epatent.co.il as a website for his services. Ehlich & Fenster use ipatent.co.il. It seems that Ehrlich & Fenster consider that ipatent is not a generic name but one that since they’ve appropriated it, they now have rights in this non-registered trademark which has acquired distinctiveness.  I find this development distasteful to the extreme.

Dahan’s letter to associates is reproduced below, as is Ehrlich’s letter.

Dear Sir/Madam

Meir Dahan Patent Law Firm specializes in filing patent applications in ISRAEL as a national phase service for foreign colleagues.

We noticed from WIPO publications that your firm represents applicants of PCT applications.

For your information, we provide you with the costs of filing and prosecuting patent applications in ISRAEL, as follows:

TABLE DELETED

Should you require further information about the detailed cost and services, we will be happy to provide such to you immediately upon request.

If you prefer not to receive similar notices from us in the future, please reply with Unsubscribe in the subject line.

We hope the above information has been helpful and we look forward to serving your intellectual property interests in ISRAEL.

Thank you for your attention.

Best regards,

Olga Lurie, Office manager 

Meir Dahan, Advocate

Ehrlich’s letter is as follows:

Dear Clients and Colleagues, 

Recently, it has been brought to our attention that several of our colleagues may have been contacted via emails from “Meir Dahan Patent Law Firm” with a solicitation offer to file National Phase applications in Israel.  The Dahan firm is using the domain name “epatent.co.il“, which is disturbingly and confusingly similar to our domain name “ipatent. co. il”

Due to complaints received in this regard from several associates around the world, we would like to clarify the following:

The Dahan Law Firm has no connection whatsoever with our firm, and we were unaware of its emails until just recently.

As soon as we became aware of the above, we immediately initiated legal actions to have the Dahan Law Firm cease using the “epatent.co.il” domain name which is confusingly similar to ours.

We regret any inconvenience caused you by these solicitation emails, none of which were initiated by, or related to, our firm.

So as to end this message on a positive note, kindly please find attached our latest newsletter discussing an Israeli judicial decision, entitled Patent Eligibility of Software-Related Inventions in Israel.  This landmark decision was a result of a successful appeal undertaken by our office.

Very truly yours

Dr. Gal Ehrlich, Patent Attorney

I’ve discussed this case with a leading trademark expert who doesn’t think that Dahan’s behavior is actionable in a court of law or under ICANN

Actually, Ehrlich did at one time try to obtain Israel trademark no. 241700 for ipatent. The mark was for Intellectual property software; all included in class 9, for Providing a website featuring information and rendering services in the field of Intellectual Property; information and professional services in the field of intellectual property ; all included in class 42, and for Intellectual property consultancy and services related thereto; all included in class 45.  However, the application was cancelled and abandoned in June 2014.

From official Patent Office figures it appears that the total number of incoming patent cases into Israel appears to be shrinking. I hope that this recent distasteful development is not indicative of what we can expect as ever more competing practitioners fight for larger slices of a smaller cake.


Israel Patent Office Closures Due to Snow

January 6, 2015

snow in Israel

Snow is expected.  Living at 940 m above sea level, we had over half a meter last year, with power cuts, water pipes frozen, etc. I must admit, therefore, that I am rather less excited and enthusiastic about this than my 12-year-old son.

The Israel Patent Office has announced that it will be closed on 7th and 8th January 2014. All deadlines are extended to the next working day.

They say that “It’s an ill wind that does nobody any good.”

The Israel Patent Office is closed on Friday and Saturday anyway. This means that Applicants with a patent, design or trademark deadline of 7th or 8th January can file on Sunday 11th January 2015.

This works for the Paris deadline for filing PCT applications as well, but it should be noted that the USPTO may have a problem with a national phase of a PCT application that claims priority from a US provisional application.

 

 

 


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