Secondary Use Claims – Some Thoughts…

June 27, 2014

second use

Yesterday I attended a meeting of the Association of Israel Patent Attorneys in ZOA  House, Tel Aviv. The invitation and program were blogged here.

The topic under discussion was Secondary Use Claims. Unfortunately, I arrived late and missed the first talk by Adv. Yair Ziv, but caught most of Adv. David Gilat’s presentation, that of Dr Ron Tomer, and that of Ena Pugatsch.

The event was well-organized and well attended. From the remains of the refreshments by the time I arrived, they seemed the usual ZOA fayre. Kudos to the committee headed by Ex-Commissioner Dr Noam, for organizing the event. There were 85 participants in the meeting. This is impressive for a highly specialized topic at an event open to a small organization (noting with approval however, that there were both lawyers and in-house patent coordinators present that are not patent attorneys and thus not members, and also trainees).

Adv. David Gilat posited that drug patents were necessary to compensate the drug developers for their investment, and that secondary uses were also the result of research.  Dr Ron Tomer (confusingly called Dr Yaron Tomer in the original invitation to the event) expertly and clearly countered all of Davidi’s positions, and demonstrated that the pharma industry were creatively filing secondary uses that lacked inventive step and were obvious. He gave various examples. Firstly, he referred to sildenafil citrate, originally developed for treating angina and now used almost exclusively as a treatment for erectile disfunction, as a hard problem. (I thought it was a flaccid problem and a hard solution, but I digress). He went on to argue that an oncological drug for one type of cancer may fairly obviously be tried for another type of cancer since the underlying effects of the drug would treat both mutant cells the same way.  He noted that patents were not awarded for research but for inventions. He claimed that there was nothing new in the drug, despite the new use. He gave convincing examples of ever-greening, and also argued that if it is surprisingly found that a drug treatment for gastro-reflux also kills bacteria in the stomach, then the patient using it takes the same drug for the same purpose that he took it for originally. Since the drug is public domain he could take the generic drug, but to kill the bacteria, he’d have to take the patented drug for a couple of weeks and then move back to the generic. similarly, someone taking a generic statin for cholesterol, on being diagnosed as having genetic cholesterol, would have to switch to the patented version offering protection for this ‘secondary use.’ The talk was intelligent and entertaining, and it was a valuable demonstration of the ubsurd results of secondary use patents.

Ena Pugatsch gave an example of a secondary use claim for a mechanical device that issued in Israel and was upheld by the courts. The device in question was a blackboard that could be used as a screen for showing projected images, where the device and method of manufacture were known but the secondary use wasn’t, and the court upheld the patent. Comparing to European case-law and to US law, she felt that the ruling was ‘problematic’ (a nice way of saying that she considered that the court had got it wrong).

When the floor was opened for questions Mr Zebulun Tomer (Ron’s father and the director of Unipharm) took the opportunity, as he has done on other occasions, to give a little impassioned speech, rather than a question. He made some noises about the results of lobbying and argued that Section 7 prohibits therapeutic treatment of the person and that no-one can convince him that a secondary use is anything other than a method of treatment of the person. Instead of merely pointing out that the issue wasn’t convincing him, but of convincing neutral judge, Adv. David Gilat agreed with him, but said that this was precisely what the Use Claim (Swiss type claims) were for – that is, to allow patents for pharmaceutical methods of treatment despite the prohibition for patents for methods of therapeutic treatment, and this was because of the costs incurred in research and development.

COMMENTS

David Gilat spoke well as would be expected from an experienced litigator. Dr Tomer’s response was also very clear and well constructed. Ena Pugatsch is not an orator, nor is Hebrew her first language (or, I expect, her second language). Nevertheless, her talk, though not the most fluent, was the most thought provoking. All three speakers had far too much content per slide, but none are lecturers. Designing good slides is an art.

David and Ron each presented their opposing positions. As Gilat Bareket represents drug development companies and the Tomer family own Unipharm which manufactures generic drugs, their views were hardly unexpected. I suspect that those in the audience actively involved in prosecuting or litigating pharmaceuticals have equally strong positions based on their source of income. (Richard Luthi, another leading litigator who represents pharma, once told me that under the former Commissioner Dr Noam, the pharmaceutical development industry didn’t have a chance. Whether Dr Naom was biased, whether Unipharm had better arguments, or whether Adi Levit is simply a better litigator, is open to discussion).

The percentage of my income coming from work on pharmaceutical patents is very small. I’ve been involved with both local and foreign clients on both sides of the fence. I tend to find the generic companies’ arguments more persuasive, but can’t tell if this is an inherent bias or whether their arguments are actually better. It is also possible that drugs that are opposed or challenged in cancellation procedures are ones that generally should not have issued, and the both the drug development industries and their litigators have an uphill battle. What is clear, is that Unipharm have had some impressive victories in recent years against Mercke, Smithkline Glaxco, Lunbeck, etc.

Ena’s talk got me thinking. I believe that the original Section 7 law against methods of therapeutic treatment is a historic artefact designed to protect doctors from being sued and represents a moral position that despite obvious utility, novelty and inventive-step, such subject matter would not be patentable. It is a remnant from a period predating the modern pharmaceutical industry. David is correct however. Without effective patent protection, drug development companies would not invest the significant sums required to research and bring a new drug to market. The long approval period also justifies patent term extensions. This development is indeed the result of lobbying, but is, nevertheless, justified. What may not have been justified, is to apply the extensions on cases that were already filed, granting the pharma industry a massive handout that perhaps resulted in them NOT investing in developing new drugs.

Drug developing companies can fairly be accused of ever-greening, and their tactics in filing for secondary uses are commercially driven. However, despite the Special 301 Reports, the generic drug industry are not Robin Hood like outlaws. It is there right to challenge the validity of patents, and some applications are allowed that shouldn’t be. Nevertheless, I suspect that sometimes oppositions are filed for commercial rather than solid legal reasons.

The Swiss Claim (use claim) format is a legal work-around the method of therapeutic treatment clause. Use claims are acceptable in European and Israeli law and are essentially method claims. They do not exist in the US, however in the US one can file methods for therapeutic treatment. What one cannot do, is enforce them against the doctor or surgeon.

After TRIPS, it is clear that one cannot exclude drugs from patent protection. One can still have a principle against patenting methods of treatment. However, countries have to allow patent protection for drugs.

As David Gilat reminded us, patent term extensions were indeed allowed as a package with and justified by a bone thrown to the generic industry – the so-called TEVA amendment, allowing the generic companies to experiment and obtain marketing approval, but not to stock-pile generic patents prior to the patent terminating.  However, one right does not balance the other. Mr Zebulun Tomer is correct that the current balance is the result of lobbying. There were lobbyists on both sides. The ‘one size fits all’ patent law does fail for pharmaceutical patents if such patents have, in the past, been allowed after the 20 year expiry date.

As to second use, the first thing to understand is that use claims are method claims and should be treated as such. The Rav Bareakh crook-lock ruling by the Israel Supreme Court allows contributory infringement and inducement to infringe. However, in Srori vs. Regba, the fact that a sink could be mounted flush with the work surface was insufficient grounds to grant an injunction against the importer, since, As Adi Levit argued effectively, the sinks in question could be mounted under the work-surface, or could be mounted with the lip overlapping the work surface (over-mounted) or could be filled with earth and used as a flower-pot.  Thus, the proper infringers were the kitchen installation companies, and there was no effective bottle neck to sue in the supply chain.  Getting back to secondary uses for drugs, lets assume that using aspirin to dilute blood to prevent thrombosis is indeed novel and inventive. This does not prevent patients buying aspirin over the counter for treating aches and pains and then using it for the new patented use. Manufacturers of aspirin are not infringing the secondary use patent. Similarly, generally speaking, patents for secondary uses are not for the drug itself, but for its use in treating a particular illness. They are method claims. I agree with Dr Ron Tomer that the manufacturer is generally not the infringing party. The physician or patient might be, that the US exception against suing health care officials should apply. There are, of course, some particular dosages that are borderline cases. In such cases, the newly packaged drug is a new product. Whether or not, it is also inventive, is arguable.

Referring back to the blackboard; Ena is correct, it was not a new product, nor was its method of manufacture new. The novelty lay in the method of use, i.e. for projecting an image thereonto. The patent provided grounds for suing schools and teachers for direct infringing – both customers of the patentee and of competitors. This is a patent without teeth. If competing manufacturers note that their blackboards may also serve as a screen, is this inducement to infringe? Maybe it would be better for them to note that although the blackboards may be used as screens, this use is protected by Israel Patent Number IL XXXX, and as long as the patent is valid, is not allowed. This is very different from the crook-lock case where the imported part was designed and manufactured for combining with two common elements to provide the crook-lock, and could only be used for infringing the patent, or for a trivial use such as a paper-weight or land fill.

At the end of the day, it is the job of the patent attorney to draft patentable and enforceable claims. I note that in the US, the pendulum has recently swung away from secondary infringement. See US Supreme Court Ruling 12–786 Limelight Networks v Akamai Technologies Inc et al., June 2, 2014. I believe that often these cases result from poor claim drafting, as do Marksman disagreements. In the past, I drafted and successfully prosecuted a  patent for a kitchen sink AFTER Tsrori vs. Negba. See  US6782593B1.  I’ve also had fun drafting together with Adv. and Patent Attorney Tami Winitz a patent for a new method of using an existing heart valve, where I believe the creative claim-set provides enforceability. See US8408214B2.  Patent attorneys drafting applications try to protect their client’s inventions and stretch the law. Litigators opposing patents do the opposite. We all have our roles to play.

 


Israel Supreme Court Upholds Decision to Ban Book

June 24, 2014

privacy

This decision by the Israel Supreme Court concerns an Appeal by an author against a decision by Judge Kanfi-Steinitz of the Jerusalem District Court that included a permanent injunction prohibiting publication of his book and 200,000 Shekels in statutory damages.

The decision tackles fundamental constitutional issues and is notable for its review of Jewish sources as well as democratic ones.

All human beings have three lives: public, private, and secretGabriel García Márquez

The decision relates to the correct balance between the right of free speech and freedom to create on one side and the right to privacy and good name on the other.

The book in question was marketed as a fictional romance but apparently is heavily based on an affair that started in 2001 and lasted 5 years between the author, a married man with children, and a student. Apparently the book goes into intimate detail in the most intimate details of the relationship including preferred sexual practices of the student.

The student, lived with her boyfriend in the appellant’s neighborhood, and worked in a Jerusalem cinema and studied art. The appellant got to know the defendant in the cinema and eventually an intimate relationship developed. This was kept private at first, but was later known to their close acquaintances and was afterwards described in the novel. Once the relationship became known, the appellant divorced his wife and the defendant separated from her boyfriend.

The defendant’s final art project was prepared whilst the affair was ongoing and related to the male-female relationship. In 2004, the appellant worked on his own creation, a novel based on the drama of the dissolution of a family. The novel describes the intimate relationship between a man of the age of the appellant suffering from an unfulfilled marriage, and a young student that he meets in a cinema. The man’s employment is that of the appellant, the cinema is where the defendant worked and, in the book, the man was married, a parent and living in Jerusalem, and the woman was single, living with her partner in rented accommodation near to the man.

The book was published with much marketing fanfare, including reviews in weekend supplements, television and internet interviews and the like. On publication the woman sued the author and the publishing house claiming that the book was autobiographical and went into intimate detail of the physical aspects of the relationship and was a serious invasion of her privacy, libel and slander and since use was made of her letters, also gave rise to an independent copyright suit. The publishing house recalled the books and stopped their sale, pending the court ruling.

The sides were unable to settle their differences and the Jerusalem District Court issued a temporary injunction against distribution of the book that Judge Gronis (now president of the Supreme Court) refused to annul.

The woman claimed that the book provided her full resume, a description of her appearance, body, likes and dislikes, character, weaknesses, conscience, sexual preferences and intimate relations. It also described her artwork. She argued that the book exposed her to acquaintances and caused her much personal and professional distress.

The author produced expert literary witnesses who argued that the book was a work of fiction, that may have been based to some extent on the author’s experiences, but that is generally the case with fiction, and preventing publishing would damage the literary arts. The author went on to allege that the woman noted the similarities to herself, but was oblivious to the substantial differences. She knew about the book and was given the opportunity to review parts of it, but decided to wait for the publication, and he claimed that this should estoppel her case. He claimed fair use, the right to self-expression, an implicit license to publish since she was aware of the book during its preparation, and that the injunction was a serious damage to his right to create and to self expression.

The publishers claimed that they published the work in good faith as a work of fiction and were unaware of any autobiographical elements. They also noted that they withdrew the book on learning of the woman’s charges.

The District Court’s Ruling may be found here

Grounds for Appeal

In the Appeal, the author argued that the issue was not whether the source of one’s inspiration could be guessed, but whether one would assume that the details described are true. (This is an interesting argument. What the author is suggesting is that if he describes a relationship involving, say bondage, fellatio and cunnilingus, how could anyone other than the partner know what was based on their intimacy and what was the results of his imagination?).

The author argued that although he claimed that the work in question was fictional the District Court’s ruling lacked balance and would effectively kill off the entire genre of autobiography since any book about oneself relates to one’s relationship with others.

The author further argued that to be found guilty of invasion of privacy, intent is required, and was lacking in this case. The woman countered by saying the total disregard of her reputation was sufficient. The author further argued that since the woman’s name does not appear, there cannot be an invasion of privacy. It was, he felt, inconceivable that story-teller could be hauled up in court on grounds of invasion of privacy for alleged similarities between a fictional character and an acquaintance.  The author accused the District Court of unfairly meddling with literary editing. Whilst he could have used a pseudonym, the use of his real name did not necessarily give rise to identification of the inspiration of the woman character.

As to the District Court’s argument that the author could have disguised his source of inspiration, he responded that this was based on hindsight and did not prove that he had malicious intent.

The Author requested the opportunity to reedit his work and remove references that might identify the woman, arguing that a complete ban lacked balance. The Author further argued that the book was praising of the woman’s artistic exhibition and that she was aware that he was writing a book, had shown no interest in reading it prior to publication and had therefore implicitly consented to it being written. He felt that the correct balance between freedom of expression and right to privacy was intent to harm, which was not proven. Furthermore, he argued that even if poor judgment could be shown, that was not, in and of itself, sufficient to find him guilty.

The author argued public interest and produced testimony of a reader who found his treatment of the subject matter helpful. Finally, the author suggested that any damages should be borne by the publishers who benefited from the publication of the book.

 

Counter-arguments

The woman argued that the District Court’s decision was fair and just. She suggested that censorship of autobiographies and creative work should only be allowed in the most extreme circumstances, but felt that this case, where every aspect of her personal and private life were exposed was such an extreme circumstance.

She argued that the District Court had already ruled that this was a publication of an intimate relationship in the guise of a novel, and not a work of fiction. All claims to a the book being a work of fiction were voided by the constant references to events and places that related to her and the author as a couple, and that third parties were aware of.

The woman rejected arguments that the correct defendant was the publisher and that the time past from the affair made the whole issue moot. As to the argument that the similarities were outweighed by the differences, she considered that not to be the case in this instance. She was in favour of literature and was aware that much literature is based on fact. She was against wholesale censorship, but felt that the facts in this case with the major invasion of privacy justified extreme measures.

The woman considered that in such cases, proving intent to harm was not the correct standard and that the total disregard for the effects of publication was sufficient to rule guilt. She noted that in addition to hurting her, the author’s ex-wife and children had also exhorted him not to publish.  She dismissed claims of an effective agreement to the publication by noting that the District Court had accepted that she was unaware of the intimate and graphic nature of the writing.

The Author cited US case law concerning the ‘people’s right to know’. The woman argued that where the persons concerned are public figures and where the level of invasion of privacy is minimal, there is some justification for publication, however she was not a public figure and the invasion of privacy in this case was neither incidental nor trivial. She argued that 200,000 Shekels damages was far from the maximum that the court could have ruled and was therefore reasonable, particularly when compared to rulings in other cases of invasion of privacy. She also argued that she was entitled to copyright damages for reproduction of her love-letters. The court noted that this was not part of the appeal and therefore they could not address this issue.

 

The Ruling

The Supreme Court first established a normative framework for considering freedom of expression, rights to publish an autobiography and rights to privacy and then went on to relate to the specific case.

The court noted the fundamental importance of Freedom of Expression but considered that where it might invade someone’s four cubits of privacy, the issues involved are fundamental to constitutional values. Since the State of Israel is a Jewish Democratic State, the judges first analyzed the issues from Jewish and Democratic sources. In this regard, we note that the main ruling was by the Hallachically Observant Judge Noam Solberg.

Citing Talmud Bavli, Taanit 8bBlessings are only found in that kept out of sight“, Judge Solberg noted that airing private matters in public in an untimely manner without full consent could destroy worlds.

Judge Solberg acknowledged that Freedom of Expression in general and autobiography in particular were vital interests. The court considered that the interaction of these essential values with the conflicting right of privacy is the kernel of this ruling.

The Court considered Freedom of Expression an essential anchor of democracy and of paramount importance in a divided and polarized society such as Israel. Noting that Judaism has always promoted dialogue and discussion as summarized by the maxim “These and these (contrary positions) are the word of the Living God” Talmud Bavli Erubim 13b.

Referring to the classic ruling 73/53 Voice of the People vs. State of Israel, the court noted that the importance of free speech cannot be exaggerated.

The court argued that both the democratic tradition and Judaism accepted plurality of expression and the right to express one’s opinions, and cited the introduction to the Hallachic work Arukh HaShulchan (Yechiel Michel Epstein (1829-1908)) to the effect that the glory of the Holy Torah is a Cocophany of Disparate voices creating a harmony, and referred to Meny Alon in 2/84 Neiman vs. Central Election Committee and to Aviad HaCohen‘s essay “Freedom of Expression, Tolerance and Pluralism in Jewish Law“. The Court posited that Former Chief Justice Barak had accepted that freedom of expression was based on both Democracy and Judaism in 6129/84 Senesh vs. the Israel Broadcasting Authority (1999).

The court went on to note that freedom of Expression is not limited to political views but also encompasses artwork, and protected the rights of artists to break conventional boundaries, citing Appeal to Supreme Court 14/86 Leor v. The Authority for Critiquing Films and Plays, the court noted that it is not just consensus views and opinions that are complimentary to the authorities that are protected, but also the rights to break boundaries and to produce artwork of ‘low inherent value, indecent pornography, political and deviant work.’ Referring to an essay by Alexander Ron in a weekly Study Sheet – Parshat Shevua, BaMidbar 5762, the court argued that such rights were also accepted in Jewish Law.

The court was not sure if Freedom of Creativity was derived from Freedom of Expression or is an independent right, but, paraphrasing the Yom Kippur Hymn, whether independent or derived, there was consensus that the silver smith had the right to both purify and to alloy his material.

As far as Autobiography is concerned, the court accepted that this has equitable value to the author and that people have the right to express themselves, but that this has to be balanced with possible damage to others. Citing Rabbi Kook (first Chief Rabbi of Israel pre-State and something of a mystic):

Literature, drawing and sculpture are realizations of the spiritual values inherent in humanity and as long as there is a drawing based deeply in a soul that has not yet been placed on paper, there is an obligation to produce it“.

The Court noted that without allowing people to express themselves to hear and be heard, to read and to write, man’s humanity is damaged and his spiritual development and intellect are stifled and prevent him from realizing himself.

As far as autobiography is concerned, the court noted that in the era of cheap publishing, internet and blogs, autobiography is not the province of the selected few, but anyone and everyone should be able to express himself and record his life story. Furthermore, truth is not a universal truth knowable in advance, but reveals itself through an appreciation of different life experiences and perspectives and to the extent that more people record their lives, the sum of human knowledge will grow. Since different people are more influential and the media is biased, it is of societal interest to encourage as many people as possible to record their experiences and to the break monopolies on knowledge.

What the court has done is to show that knowledge in general and autiobiography in particular are democratization, giving a vote and a value to the individual separate from the collective.

Citing the Maggid of Mezeritch (a Hasidic Master 1704 – 1772), Judge Solberg challenged the Appelant’s assumption that free speech was necessary for creativity, and suggested that privacy may be more essential. The Maggid noted that the great act of creativity is procreation which is (normatively) a private act. Also, a seed needs to be covered in the dirt and hidden from view to germinate.

He noted that elections are only democratic if they are preceded by an opportunity for people to express themselves and their concerns and accompanied by debate and attempts to persuade by argument.

The court sees a problem with gatekeepers and sensors, media and political censoring  The courts noted that the democratization effect of social media has forced dialogue and change in surrounding totalitarian Arab regimes. Democracy without free speech is considered a soul-less regime.

Nevertheless, despite the centrality of freedom of expression, creative expression and autobiography, the court does not accept these values as being absolute. The court ruled that my freedom of action stops at your nose. My freedom of expression does not allow slander or libel. It does not justify damaging national security, creating a civil disturbance or the right to give false witness in court.

The right to privacy is enshrined in Section 7 of the Basic Law – Respect of Man and His Freedom 1980 which states that each man is titled to privacy. One does not enter a person’s territory without permission. One cannot search a person, his body or chattels, and one must not damage a person’s self expression, writings or records.

The courts have upheld the rights to privacy. This again, is subject to checks and balances:

Objectifying another person for one’s own gains damages his personal integrity:

“Man, and in general every rational being, exists as an end in himself and not merely as a means to be arbitrarily used by this or that will. He must in all his actions, whether they are directed to himself or to other rational beings, always be viewed at the same time as an end… Persons are, therefore, not merelysubjective ends, whose existence as an effect of our actions has a value for us; but such beings are objective ends, ie, exist as ends in themselves.” (Immanuel Kant, Groundwork of the Metaphysic of Morals, 428 (H. J. Paton trans., 1964)).

It is totally forbidden to use someone else’s person for one’s gain, and the privacy of the individual is the hard core (maybe an unfortunate choice of wording?) of his person.

 “The injury is to our individuality, to our dignity as individuals, and the legal remedy represents a social vindication of the human spirit thus threatened rather than a recompense for the loss suffered.” (Edward J. Bloustein, Privacy as an Aspect of Human Dignity: An Answer to Dean Prosser, 39 N.Y.U. L. Rev. 962, 1003 (1964)

To conceive someone as a person is to see him as actually a chooser, as one attempting to steer his course through the world, adjusting his behavior, as his appreciation of the world changes, and correcting course as he perceives his errors. It is to understand that his life is for him a kind of enterprise, like one’s own… To respect someone as a person is to concede that one ought to take the account of the way in which his enterprise might be affected by one’s own decisions. By the principle of respect for persons, then, I mean the principle that every human being, insofar as he is qualified as a person, is entitled to this minimal degree of consideration”(Stanley I. Benn, Freedom, and Respect for Persons, in privacy & personality 1, 9 (J. Roland Pennock and John W. Chapman eds., 2009)).

The right of privacy, is a consequence of the Right of Human Dignity, see Civil Appeal: Eloneal vs. Mc Donald, 45(4) 314, Judge Rivlin there, Anon. in A Barak‘s ruling, Ruth GavesonThe right to privacy and respect, articles in memory of Shelach 61 (1988).

Functional Justifications

Normative existence in a democracy requires trust between people, particularly those in intimate relationships.

There are a number of theories that confidence and privacy are necessary to allow a person to fully develop and realize himself. George Orwelles’s 1984 is given as an example of where this privacy is not respected.

Brandeis:

 “The makers of our Constitution undertook to secure conditions favorable to the pursuit of happiness. They recognized the significance of man’s spiritual nature, of his feelings, and of his intellect. They knew that only a part of the pain, pleasure and satisfactions of life are to be found in material things. They sought to protect Americans in their beliefs, their thoughts, their emotions and their sensations. They conferred, as against the Government, the right to be let alone — the most comprehensive of rights, and the right most valued by civilized men.” (Olmstead v. United States, 277 U.S. 438, 479 (1928).

The man who is compelled to live every minute of his life among others and whose every need, thought, desire, fancy or gratification is subject to public scrutiny, has been deprived of his individuality… Such an individual merges with the mass. His opinions, being public, tend never to be different; his aspirations, being known, tend always to be conventionally accepted ones” (Bloustein,.(1003

See also R. v. Dyment, [1988] 2 S.C.R. 417, and the Birnhack on the Rights for Privacy in Law and Technology.

Privacy differentiates between the ‘I’ and society, and defines a space where the individual is left alone to develop as an individual without external interference (the Dayan case).

Liberty includes the right to live as one will, so long as that will does not interfere with the rights of another or of the public. One may desire to live a life of seclusion; another may desire to live a life of publicity; still another may wish to live a life of privacy as to certain matters, and of publicity as to others. One may wish to live a life of toil, where his work is of a nature that keeps him constantly before the public gaze, while another may wish to live a life of research and contemplation, only moving before the public at such times and under such circumstances as may be necessary to his actual existence. Each is entitled to a liberty of choice as to his manner of life, and neither an individual nor the public has a right to arbitrarily take away from this liberty” (Pavesich v. New England Life Insurance Co., 50 S.E. 68, 71 (Ga 1905)).

 Citing the Medieval commentator Rashi and the Midrash Tachuma on Exodus 34:3, the Ten Commandments were first given publicly with thunder, lightening and the sounding of the ram’s horn (audio-visual extravaganza?), but the evil eye was therefore upon them and they were broken. The second set were given in a small quiet voice and were the ones that lasted.

The decision continues to cite widely from Jewish sources, Aristotle and modern legal and philosophical works to show that Man needs relationships: It is not good for man to live alone Genesis 2:18, Man is a political animal Aristotle Politicals Book I 28-37, a study partner of death (Bavli, Ta’anit 23a). These sources indicate that every one of us is involved in a plethora of relationships in our complex lives, each of which has its own character.

The relationship between man and wife has a  character of intimacy that the Law  protects. Most clearly in the legally defined relationship of Man and Wife, but this is extended to long term, steady Common Law relationships which also have legal recognition and responsibilities of confidentiality. It is precisely for this reason that Rabbinic Responsa Nahlat Sheva, Contracts 9) rules that business circumstances where a man is unable to give witness, his wife is also unacceptable. A man can appoint his wife as his proxy for actions that a third aprty would not be acceptable for,, and In Israel Law of Evidence 1981, in criminal law, spouses may not testify against each other.

In the novel, it is the woman’s right not to be exploited and to have her privacy respected.

COMPARATIVE LAW

English Approach,

In the past, the available tort was Breach of Confidence, which depends on the type of confidence, how it became known and whether there is an assumption of confidentiality.

In the past decade, the British law has expanded this. Lord Hoffman in Campbell:

“The new approach takes a different view of the underlying value which the law protects. Instead of the cause of action being based upon the duty of good faith applicable to confidential personal information and trade secrets alike, it focuses upon the protection of human autonomy and dignity – the right to control the dissemination of information about one’s private life and the right to the esteem and respect of other people.”

In personam rights have in rem obligations. Notice is made of the European Convention for the Protection of Human Rights and Fundamental Freedoms.

Australia

Not all acts taking place in private on ones private property deserve confidentiality, a factory owner claiming that the method that opposums (why isn’t this opposii?) were killed in his factory was confidential, was rejected.

“There is no bright line which can be drawn between what is private and what is not. Use of the term ‘public’ is often a convenient method of contrast, but there is a large area in between what is necessarily public and what is necessarily private. An activity is not private simply because it is not done in public. It does not suffice to make an act private that, because it occurs on private property, it has such measure of protection from the public gaze as the characteristics of the property, the nature of the activity, the locality, and the disposition of the property owner combine to afford. Certain kinds of information about a person, such as information relating to health, personal relationships, or finances, may be easy to identify as private; as may certain kinds of activity, which a reasonable person, applying contemporary standards of morals and behaviour, would understand to be meant to be unobserved. The requirement that disclosure or observation of information or conduct would be highly offensive to a reasonable person of ordinary sensibilities is in many circumstances a useful practical test of what is private. (Australian Broadcasting Corporation v Lenah Game Meats Pty Ltd [2001] HCA 63).

New Zealand – see P v D [2000] 2 NZLR 591 and alsoWilliam L. Prosser, Privacy, 48 Cal. L. Rev. 383, 396-397 (1960).

“20. ….article 10(2), (like article 8(2)of the European Convention for the Protection of Human Rights and Fundamental Freedoms), recognises there are occasions when protection of the rights of others may make it necessary for freedom of expression to give way. When both these articles are engaged a difficult question of proportionality may arise. This question is distinct from the initial question of whether the published information engaged article 8 at all by being within the sphere of the complainant’s private or family life.

21. Accordingly, in deciding what was the ambit of an individual’s ‘private life’ in particular circumstances courts need to be on guard against using as a touchstone a test which brings into account considerations which should more properly be considered at the later stage of proportionality. Essentially the touchstone of private life is whether in respect of the disclosed facts the person in question had a reasonable expectation of privacy”

Lord Hoffman in Cambell:

  “I shall first consider the relationship between the freedom of the press and the common law right of the individual to protect personal information. Both reflect important civilised values, but, as often happens, neither can be given effect in full measure without restricting the other. How are they to be reconciled in a particular case? There is in my view no question of automatic priority. Nor is there a presumption in favour of one rather than the other. The question is rather the extent to which it isnecessaryto qualify the one right in order to protect the underlying value which is protected by the other. If one takes this approach, there is often no real conflict. Take the example I have just given of the ordinary citizen whose attendance at NA is publicised in his local newspaper. The violation of the citizen’s autonomy, dignity and self-esteem is plain and obvious. Do the civil and political values which underlie press freedom make it necessary to deny the citizen the right to protect such personal information? Not at all. While there is no contrary public interest recognised and protected by the law, the press is free to publish anything it likes. Subject to the law of defamation, it does not matter how trivial, spiteful or offensive the publication may be. But when press freedom comes into conflict with another interest protected by the law, the question is whether there is a sufficient public interest in that particular publication to justify curtailment of the conflicting right. In the example I have given, there is no public interest whatever in publishing to the world the fact that the citizen has a drug dependency. The freedom to make such a statement weighs little in the balance against the privacy of personal information”

“The weight to be attached to these various considerations is a matter of fact and degree. Not every statement about a person’s health will carry the badge of confidentiality or risk doing harm to that person’s physical or moral integrity. The privacy interest in the fact that a public figure has a cold or a broken leg is unlikely to be strong enough to justify restricting the press’s freedom to report it.” The Baroness Hale Of Richmond

In A v B [2003] Q.B. 195 (C.A. 2002), concerning a British footballer’s one night stand with two women, revealed to the press by one of them, despite anticipated damage to footballer’s family:

“The fact that the confidence was a shared confidence which only one of the parties wishes to preserve does not extinguish the other party’s right to have the confidence respected, but it does undermine that right.  While recognising the special status of a lawful marriage under our law, the courts, for present purposes, have to recognise and give appropriate weight to the extensive range of relationships which now exist. Obviously, the more stable the relationship the greater will be the significance which is attached to it”

As contrasted with Ms Kennitt and Ms Ash:

 “… the relationship between Ms Mckennitt and Ms Ash…was miles away from the relationship between A and C and D. In the preceding paragraph I deliberately and not merely conventionally described the latter as a relationship of casual sex. A could not have thought, and did not say, that when he picked the woman up they realized that they were entering into a relationship of confidence with him.”

Thus in A and B, the shortness of the relationship did not create an obligation of confidentiality on the women, who had the right to enjoy their moment of fame and Mirror payment for their story. Here, the relationship lasted 5 years and the rights and obligations, whilst not sanctified by marriage, are, nevertheless, recognized by the Law.

EUROPEAN LAW

In  Von Hannover v. Germany (no. 2) [GC], nos. 40660/08 and 60641/08 ECHR, the rights of the Monacao royal family to prevent photos of them on holiday is discussed. Considerations regarding bannig  publication include the extent to which the material contributes to public discussion, whether the personalities are public or private, the person’s attitude re publicizing the material in question, content, form and consequences of publication and how the material was obtained.

It is noted that Continental Law greatly respects the rights of public figures to have a private life:

“Even serious public interests cannot justify encroachments of this area; an evaluation according to the principle of proportionality does not take place” (BVerfGE 80, 367 (1989) NJW 1990 563).

Code Civil [C. CIV.]:

“Everyone has the right to respect for his private life. Without prejudice to compensation for injury suffered, the court may prescribe any measures, such as sequestration, seizure and others, appropriate to prevent or put an end to an invasion of personal privacy; in case of emergency those measures may be provided for by interim order.”

AMERICA

Restatement (Second) of Torts, § 652 (1977)  ‘Public disclosure of Private facts’

One who gives publicity to a matter concerning the private life of another is subject to liability to the other for invasion of his privacy, if the matter publicized is of a kind that:
(a)  would be highly offensive to a reasonable person, and
(b)  is not of legitimate concern to the public”

Campbell v. Seabury Press, 614 F.2d 395 (5th Cir. 1980)

“A review of the record in this action clearly shows the requisite logical nexus. An account of the author’s close association with his older brother certainly is appropriate in the autobiography. Likewise, accounts of his brother’s marriage as they impacted on the author have the requisite logical nexus to fall within the ambit of constitutional protection”.

In America, Freedom of Speech is protected by the constitution, privacy, is however, is not. As noted by Judge Miriam Naot, it is thus possible that in a similar case the US, the courts would reach a different conclusion from that of Israel and other Common Law countries

In Bonome:

“As noted above, there is an additional interest in this case: Kaysen’s right to disclose her own intimate affairs. In this case, it is critical that Kaysen was not a disinterested third party telling Bonome’s personal story in order to develop the themes in her book. Rather, she is telling her own personal story–which inextricably involves Bonome in an intimate way. In this regard, several courts have held that where an autobiographical account related to a matter of legitimate public interest reveals private information concerning a third party, the disclosure is protected so long as there is a sufficient nexus between those private details and the issue of public concern. Id.; Anonsen, 857 S.W.2d at 705-06; Campbell v. Seabury Press, 614 F.2d 395, 397 (5th Cir. 1980). Where one’s own personal story involves issues of legitimate public concern, it is often difficult, if not impossible, to separate one’s intimate and personal experiences from the people with whom those experiences are shared. Thus, it is within the context of Bonome and Kaysen’s lives being inextricably bound together by their intimate relationship that the disclosures in this case must be viewed. Because the First Amendment protects Kaysen’s ability to contribute her own personal experiences to the public discourse on important and legitimate issues of public concern, disclosing Bonome’s involvement in those experiences is a necessary incident”.

In Israel, where the rights cannot coexist, it is fitting for the right of expression of one party to give way to the right of privacy to the other.

The Supreme Court quoted Jewish Rabbinic sources, philosophy, political and Israeli and foreign legal sources to try to provide a framework for balancing the conflicting rights of privacy and self-expression. They acknowledged that literature is often based on fact, but upheld the district court’s ruling that acquaintances of the woman would recognize her, and that she was entitled to privacy. The details of the character could and should have been changed more significantly.

The main Judge, Noam Solberg (who is religious and Jewish) declined from illustrating how the woman’s sexual habits were described, since this would damage her privacy, but noted that his ruling was written after reading the novel in its entirety. The ruling of the district court was upheld by all three judges.
Deputy Supreme Court Judge Miriam Naot (Secular, Jewish) also noted that she had read the book but considered that it would be improper to go into the salient details, but she felt that the invasion of privacy exceeded a release of a film of their bedroom romping since it attempted to get into the woman’s  head.

Judge Jubrian (Moslem) felt there was a vital constitutional right to allow of freedom of speech on political subjects, including views that one disagrees with and minority-held extreme views have a right to be heard. This constitutional right does not have the same validity when the rights of others are trampled on. Judge Jubrian ruled than on fundamental political issues the right for the freedom of speech is paramount. In this case the author could have taken pains to create a work of literature that was less invasive. As an alleged work of literature it is not entitled to the protection forwarded to autobiography.

The ruling was held unanimously and the man was fined NIS 750,000 and legal fees.

Civil Appeal 8954/11 Plony vs. Plonit, Supreme Court.

 

COMMENTS

  1. This decision may be slightly off-subject for an IP Blog, but the original case was reported since the woman claimed copyright infringement in personal letters that were reproduced. As the decision is an important one, is well reasoned, and since I am in favour of promoting Jewish Civil Law, I am happy to blog it to bring it to the attention of the English speaking world, and suspect that it will generate a lot of interest. I have reported this case at length since I was approached by a British QC to report on the case.
  2. In Memoirs Of Fanny Hill By John Cleland (London, 1749), a fictional memoir of a woman of pleasure, the male characters are referred to as Lord D, Mr H, etc. Road names are changed. It does seem that this is the correct standard.
  3. In many ways this is the literary equivalent to a recent decision in Germany where a woman who had an affair with a photographer obtained an injunction preventing the publication of compromising pictures of her. Indeed, Judge Miriam Naot ruled that were the man to publish compromising photographs of himself with the student, clearly the court would agree to a request by the student to impound those pictures. The present case was considered more exposing, in that it also attempted to describe what went on in her head.
  4. The Campbell case related to drug dependency of the model Naomi Campbell. The relevance of this decision to newspapers publishing photos and articles concerning royalty and political figures (Duchess of Kent changing bikini, Prince Harry in Las Vegas, Bill Clinton and Monica Lowinski, Mosley Junior with prostitutes in Nazi uniform, Netanyahu’s affair, etc) is clear.
  5. People are entitled to privacy in their private lives. Letting someone into your bedroom does not give him license to expose what happened there to the rest of the world.
  6. I believe that the ease with which anyone can publish words or pictures taken with a mobile phone and reach an unlimited audience with blogs, facebook and the like, justifies the Supreme Court’s stance.
  7. I am unhappy with all three judges referring to the male and female characters as the hero and heroine of the book. I see to reason to romanticize an affair that broke marriage vows and left other people hurt.
  8. Despite the precedents mentioned, the there have been cases of curtailing free speech by both the Israel courts and by the Jewish religious leadership.
  9. The Israeli courts did indeed allow a communist paper to flourish and Kol HaAm is an important decision. Communists are one thing. The same Supreme Court later banned the popular Arutz 7 radio station in an en blanc that doesn’t even mention the value of freedom of speech and expression, ignoring the fact that those who campaigned for this important nationalist voice to be silenced were the same people who wanted Abu Natan, the DJ behind the Voice of Peace to receive a Nobel Prize. The Minister of Communications who created legal private radio stations, Shulamit Alony intentionally crafted the law to block Arutz 7.
  10. Former Arab Knesset members who were later found to be spying for Syria were not banned, but Meir Kahannah was banned from running for the Knesset due to his right wing politics. In general, we note that it is dangerous to ban political parties as it makes outlaws of ideologists and moves them outside the system. It also boosts their attraction.
  11. The books of Maimonides, Gersonides and Spinoza were banned. The Chassidic movement was banned in its day. More recently the late Rav Shach banned Rabbi Steinzalz, Rav Schneerson, Rav Riskin and Rav Lichtenstein. There were recent attempts to dicommuniate Rav Stav. I am scared by those that know the whole truth because God speaks to them. A few years ago, some extreme ultra-Orthodox rabbis created the concept of Daas Torah. They apparently have a monopoly on the truth. Dangerous. Let ideas win in the market place.
  12. Generally, excommunication and banning merely makes a work or a rabbi more popular, this is true of forbidden literature and music as well.
  13. Banned views sometimes become main-stream over time. Let the Sun Rise was banned and is now main stream in Israel. We note that the Rolling Stones are performing in Israel this summer. They’ve been banned before.
  14. Judge Noam Solberg is a settler living in Gush Ezion, a West Bank enclave that is a rebuilding of settlements destroyed in 1948. His ruling was adored by Mekor Rishon and was criticized by HaAretz. We wait to see whether this is a one-off ruling or whether the Jewish scholarly and legal traditional will be influential in future rulings.
  15. So the courts aren’t perfect. I think this ruling is nevertheless correct. I’ve recognized characters in books where the authors haven’t changed names. In general, this should be avoided, at least as far as personal lives are considered.

Employee’s IP – When Things Get Multinational…

June 19, 2014

academic

Smart & Biggar, a Canadian firm with a memorable name has a good article comparing and contrasting the rights of an employer in employee’s copyright and inventions. See here.  

This is an issue that comes up around the world, and which I have reported on and organized seminars on.

Dr Shlomit Yanitzk-Ravid has recently published a book on the subject, based on her PhD theses. There were also a recent Israeli court ruling and a committee decision that referred to that book.

As academics, including Shlomit, spend time on sabbatical and as visiting professors (currently she is seconded from ONO to Yale), there are territorial complications. If a paper is written by a visiting professor whilst staying at a college who supports royalty free publishing, should he/she have to publish in such a journal? What about if the college where he/she is tenured prefers publication in one of their own Law Reviews?

Companies are often multinational. It is not inconceivable that a company formed and headquartered in the US State of Delaware could develop an invention by collaboration between research groups in Israel and Europe. Apart from Employment Law and Patent Law in the different countries, perhaps being different, funding from binational govt. research funds may have strings attached. Some of the research could be done by a post-graduate student in a university. One inventor may be a tenured university professor consulting to industry and another might be an industrialist who teaches a course in the university. Research could be performed in a university of industrial lab, but what if it is performed on a computer terminal in the company whilst logged on to a university computer?

Where I get drawn into these types of issues, I may be consulting to US council of the Head Office, perhaps outside-council, and could be billed by a US law firm. If the company that perhaps owns the IP has a research lab or factory in Israel, should I be charging VAT on my fees even though I am being paid by money that is laundered, conditioned and neatly pressed by the US Law Firm?


IP Blogging With a Political Agenda

May 14, 2014

red skin

I’ve come back from the INTA Meet the Bloggers meeting at the Hong Kong Yachting Club, which was kindly sponsored by Marks & Clark.

Marty Schwimmer (the Trademark Blog) spoke. He decided not to list the various IP blogs represented. Not least because we’d lose interest long before coming to the end of Professor Phillips’ blogging interests. Instead, he decided to request that we link to his blog and report on his campaign to have the Washington Redskins change their name. Marty is of the opinion that the term is demeaning to native American Indians and we should have a social conscience. Marty’s blog post is here. Jeremy’s preliminary rebuttal on the IPKAT is here.

I tried to speak to him afterwards. I pointed out that the State of Bavaria is interested in extending the copyright of Mein Kamf to keep Hitler’s magnum opus out of the public domain. Whilst not being a great fan of that work of literature for which Hitler was nominated for a Noble Prize in literature, I think that attempts to sensor it are futile, and if it is decided to do so, it should be done under race literature laws not by abusing copyright law. Marty Schwimmer’s response was that the Redskin issue wasn’t a legal issue, but an ethical one.

The Redskin issue has had its day in court. See Native Americans Activists Lose Annulment Procedure Against Redskins Trademark see also Supreme Court Refuses to Hear Chicago Redskins Complaint. See Quinn Emanuel, Leading US Litigation Firm Hosts Seminar in Tel Aviv,  Offensive Trademarks and Statute Of Limitations and Supreme Court Asked to WeighRedskins Case. Frankly, I’ve given more than a little coverage to this issue on a blog that is primarily devoted to Israeli decisions, cases on Jewish themes, those involving Israeli companies and other things of  interest to Israeli practitioners. I don’t know that the issue is really of interest to Native Americans. It is unlikely to be of interest to Israelis.

I don’t know anything about American football and little about native American sensitivities.

If Marty and I concur that the issue is not a legal one but a moral one, then maybe an IP blog is not the correct forum to discuss it?  I first met Marty at a Meet the Bloggers two years ago in Washington, or maybe the year before in San Francisco. He noted my Kippa (skull cap, yarmulka, cuppel) and beard, and decided that I was a right-wing Israeli who was racist. He didn’t ask me my views but made his very clear. I’ve meanwhile, enjoyed excellent relationships with IP professionals in Jordan, Egypt, Gaza, West Bank, Qatar, UAE, Iran, Morocco and Iraq. we shake hands and promise to send each other IP work insh’Allah when the situation improves. One Saudi Arabian refused to shake my hands. One Israeli practitioner also made a point of ignoring me. So what?

I have a social conscience. I am a political activist. However, I have different politics than Marty and different social values. I am not sure that INTA is the place to discuss these views and am not sure that IP blogs should cover non-legal social issues beyond those affecting the profession. I have successfully influenced corrupt patent practitioner practices in Israel, undemocratic practices of the representative organization for patent attorneys in Israel, Kosher food and the lack of it at INTA and AIPPI, non-licensed practitioners and silly practices of the patent office that lead to files becoming abandoned by mistake. I critique decisions by IP examiners, commissioners and judges on this blog, and know for a fact that several of them follow the blog, so it is likely that the feedback has some effect. I also demonstrate and write letters on other issues of concern, but don’t publish on this blog as it is not the correct forum.

I make no secret about living in a West Bank settlement. This does not mean that I am comfortable about the current state of affairs re Arabs on West Bank. It doesn’t mean that I don’t recognize the rights of Arabs to live in their ancestral homeland. Only that I believe in my right to live in my ancestral homeland, where history, literature, all monotheistic religions and achaeology show that I have deep ties to the area. I am happy to host Marty (or other practitioners) for a Shabbat in Ofra, and to discuss the peace process and political situation at length. I suspect that his understanding is no deeper than mine is of the Crimean issue, Morocco, Kurdistan or Armenia, and probably less than my understanding of Northern Ireland or Scotland. Marty may be well meaning, but he is a bigot who does not bother to engage in calm discussion, certainly not with me.

I sat with a couple of Ukrainian patent attorneys and one from Nigeria today. The position of native Americans is perhaps better than that of Crimeans and Nigerian teenagers. An ex-Israel Prime Minister was sentenced to 6 years for corruption. My Arab colleagues report that the situation in Syria and Egypt has been better. Is the Redskin issue the most burning social concern?

I have a great deal of respect for attorneys who refuse clients on political principle. I am an Intellectual Prostitute, i.e. I am in the field to earn a living but I don’t take on all cases. I can and do work pro bono for what I consider to be worthwhile causes. I also give plenty of free consultancies to wannabee entrepreneurs and usually try to persuade them to think carefully before investing in pipe dreams.

I also remember the “Dykes on Bikes” fiasco where a well meaning male trademark practitioner tried to prevent a women’s motorcyling club from using a mark that he found offensive. That case was also thrown out.  See Dykes on Bikes® – US Supreme Court Allows Trademark and “Dykes on Bikes” Trademark Upheld in US.

I think that Marty may simply make his blog less relevant by becoming less legal and more political. I assume that if enough fans stop buying Redskins merchantise. the club will change its name. Maybe I am less than sensitive to this issue. Maybe it is a non-issue. Maybe Marty is simply a well-meaning bleading-heart lefty. What is clear is that he doesn’t have time to discuss or debate. He knows it all.


Cialis Again – District Court Rules that Only Parties to an Opposition have Standing to Appeal the Decision

February 10, 2014

assume a spherical cow

Lilly Icos produce a drug called Tedalafil, which is used to treat male impotence due to erectile dysfunction. The drug, is marketed as Cialis. When their patent application number IL 146742 covering the drug was allowed, TEVA opposed the patent issuing. After cross examination of expert witnesses but before final summaries were submitted, a commercial arrangement between Lilly Icos and Teva resulted in the opposition being dropped. However, then Deputy Commissioner, Noah Shalev Smylovezh ruled that the ‘inventive step’ on which the patent had been allowed was that fine grinding increased the solubility of the active ingredient. He ruled that this was obvious, and so, under authority of Section 34 of the Israel Patent Law, he rejected the patent anyway. This decision of his is correct. Dissolution is a surface effect and for a given mass of material, the more finely ground, the larger the surface area to volume ratio.

Expressed mathematically:

Assume spherical particles:

For a given mass M, the number of  particles n =  M / (4/3πr^3)

The surface area A of each sphere is 4πr^2

Thus the total surface area A = n 4πr^2 = 3M/r

As r shrinks, the surface area increases.

Since perfect spheres have the lowest surface area to volume ratio of any solid (which is why soap bubbles are spherical), for any other shape, the surface area increases even faster as the dimensions decrease.

The standard of obviousness for patentability in Israel is ‘obvious to try’ – see Fosamax decision by Dr Meir Noam, which was upheld by Israel Supreme Court.

Section 30 is there to prevent patents issuing that shouldn’t. This is a patent that then Deputy Commissioner, Noah Shalev Smylovezh had concluded lacked inventive step, and so  under Section 34 he refused the patent, thus ensuring the integrity of the register, allowing generic competition and allowing impotent men and their partners to benefit from cheaper erections.

An earlier posting on Noah Shalev Smylovezh’ decision may be found here.

The applicants requested further clarification, but Deputy Commissioner Noah Shalev Smylovezh’s contract as Deputy Commissioner had ended and he had returned to private practice. Ms Yaara Shoshani, an adjudicator at the Israel Patent Office took over his open files. She clarified the decision but gave the parties 30 days to respond. After reviewing their submissions, she decided not to use her powers under Section 34 of the Law, and to allow the patent to issue. Her reasoning, which overturns Dr Noam’s ruling regarding obvious to try is found here. Essentially she replaces the ‘obvious to try’ standard, with a ‘not necessarily the first thing one would try’ standard.

Unipharm appealed this decision to the Jerusalem District Court, where Judge Ben-Zion Greenberger heard the case.

Unipharm claimed that there was a chain of events that had resulted in a miscarriage of justice and requested that the Jerusalem District Court rehear the case. They claimed that the onus was on the applicant to prove that they deserved a patent and merely because the opposition was dropped, the basic requirement of a non-obvious inventive step remained missing.

Instead of addressing this issue, agent for patentee argued that Unipharm lacked standing since they were not a party to the opposition and therefore the case should be thrown out under Section 421 of the Civil Procedure Law and / or regulations 101 and 102. Unipharm countered that under the Patent Law, 174(a) anyone who sees himself hurt by a patent office decision has the right of appeal.

The Court ruled that before addressing the substantive patentability issue, it should address the issue of standing and relate to the correct interpretations of Sections 30, 34 and 174(a) of the Israel Patent Law and Section 421 of the Civil Procedure Law and / or regulations 101 and 102.  On this point, it ruled not to allow Unipharm standing, and so the patent remained valid and the decision of the Ms Yaar Shoshani Caspi, overturning Deputy Commissioner Smylovezh’ ruling was not addressed.

COMMENTS

This is an unsatisfactory state of affairs. The reason why the Commissioner (or his delegate) has authority under Section 34 is so that in cases where the parties do a deal and an opposition is withdrawn, but the person hearing the case believes that there are grounds for invalidating the patent, the patent office is supposed to continue in the hearing in-partes and rule on validity on the merits.

Ms Shoshani Caspi’s position disagrees with Dr Noam’s standard of obvious – obvious to try. It also overturns Noah Shalev Smylovezh’ conclusions. Unipharm should have filed an opposition, but missed the deadline. Nevertheless, Judge Ben-Zion Greenberger’ws ruling that Unipharm has no standing means that he is avoiding judicial oversight of this decision and doing so on a technicality.

The arguments put forwards by both parties had the usual dose of ‘smoke and mirrors’. The Judge quoted Barak and claimed to be doing an analysis of what the purpose of the Law was, and decided that the correct balance between patentee and opposers and rest of the public was to allow the opposers to appeal, but not third parties.

There is some logic in interpreting patent law in light of standard civil court procedures. But, clearly all generic manufacturers and importers are affected by this decision, whether or not they were a party to the opposition. indeed, the public – at least the male impotent members subsection of the public – is served by preventing monopolistic pricing on the drug in question. It therefore seems to me that the Court of Appeal should address the issues of patentability, specifically the issue of obviousness on its merit.

Maybe a user of Cialis should have filed the case, perhaps as a class action? Perhaps the way forward is for Unipharm to file cancellation proceedings and to make sure that the issue of inventive step is considered on its merits. Alternatively, they can appeal this decision to the Supreme Court.

We note that in a recent decision the Supreme Court ruled that when hearing an appeal of an opposition ruling, the district court can even hear new evidence if appropriate. In that decision, which also challenged a strange Israel Patent Office decision, the Supreme Court ruled that appeals of Patent Office decisions are different from regular appeals of court decisions and an appeal may, if warranted, be a new trial with new evidence. I think that in the present case, it is likely that the Supreme Court would refer the case back to the District Court to consider on its merits. If that happens, I believe the ruling should be reversed.


We All Make Mistakes, Dr Cohen…

November 19, 2013

In earlier blog posts, I reported on two rulings by the Deputy Commissioner, Ms Jacqueline Bracha concerning a late submission of a trademark opposition.  In the first blog post I reported the Original Decision wherein she refused to grant a retroactive extension on the grounds that under her understanding of the Law, she doesn’t have legal competence to do so (ultra vires), and, in the second blog post, I reported on a Second Decision  concerning a Request for Reconsideration which she also dismissed out of hand.

I was somewhat surprised to receive a rather heavy handed and threatening email from Dr Shlomo Cohen  (mis-addressed as Mr, instead of Dr, but common courtesy doesn’t seem to be Dr Cohen’s strong point).

Dr Cohen’s email is reported, verbatim, as follows:

Without Prejudice
For Immediate Action
November 11, 2013
Re: A Further Tortuous Publication
Mr. Factor,
In your recent “IP Factor” publication you have once again provided misleading wrongful information, again with a clear intent to harm us.
I refer specifically to the text in your recent publication “but apparently due to a human error by their representatives, Dr. Shlomo Cohen & Partners, Law Offices, the opposition was submitted on 2 October 2013, missing the three month deadline of 30 September 2013 by a couple of days”. This language is wrong, misleading and intentionally harmful.
As you well know this is not the first time you have acted maliciously in an attempt to twist facts and injure this firm.
This time we will enforce our rights in full!
We demand that you:
a. Immediately (by Tuesday November 12, 2013 at 10:00am) remove this language from your publication.
b. Within three days (by Thursday November 14, 2013 at 2:00pm) publish an apology and retraction for this wrongful language with a text to be approved by us no later than Wednesday November 13 at noon.
c. Pay us statutory damages of NIS 100,000, by Sunday November 17, 2013
d. We will then follow up on your previous injurious malicious publications and demand full compensation for them as well, as we have warned you in the past
If you do not comply with these demands, at the times stated, we will take all necessary legal action to enforce our rights
No further warning will be sent.
Shlomo Cohen
Dr. Shlomo Cohen & Co.
Century Tower
124 Ibn Gvirol
Tel-Aviv 6203854, Israel
Phone: (972-3) 527 1919
Fax: (972-3) 527 2666
E mail: cohens@shlomocohen.co.il
Web: http://www.shlomocohen.co.il
IMPORTANT: The contents of this email and attachments are confidential and may be subject to legal privilege and copyright. Copying or communicating any part of it to others is prohibited and may be unlawful. If you are not the intended recipient, please delete it immediately and notify us by telephone. Thank you.

I was somewhat surprised to receive this notification, since Ms Bracha had clearly reported the grounds for the request for the extension in her decision. accusations of publishing misleading wrongful information should not be taken lightly.  I wondered if I had misunderstood the ruling.  I rang the Israel Patent & Trademarks Office to try to obtain clarification. After all, in a previous report concerning a missed deadline, due to poor phrasing, I’d erroneously attributed an action of the client’s representative (meaning CEO) to their legal representative. Mistakes do happen. Unfortunately, but not surprisingly, Ms Bracha’s secretary referred me to the legal aids who informed me that they don’t clarify decisions. Very helpfully however, they forwarded me the correspondence in the file which is all public domain. This is a link to the Original Submission by Dr Shlomo Cohen, Law Offices. Here is a Notarized Translation.

I was bemused. I really could not see what Dr Cohen was objecting to. I decided to ask him. Here is my email to him:

Dear Dr Cohen,

I apologize for not responding to you earlier.  I wished to first review the decision and also the appeal wherein you tried various creative interpretations of the Law which were dismissed out of hand by the deputy commissioner. I don’t see how my report may fairly be considered wrong, misleading and intentionally harmful. In case, the Deputy Commissioner had made a mistake or I had misinterpreted her ruling I have now obtained and reviewed the file. I am at a total loss to understand what you are objecting to. Please clarify and I will consider correcting. If after clarification, it appears that an apology is called for, I have no problem apologizing. I did, indeed, make a mistake regarding an action wrongfully attributed to a different IP firm due to poor wording of the decision, and I immediately published a retraction and apologized. In this case, however, I don’t see that there is anything to apologize about. I report decisions of the Israel Patent Office and of the course. I try to do it fairly and objectively. If you have a genuine grievance, you are invited to come over to my office and we’ll talk about it over lunch.
If you prefer, simply answer the following questions:

1. Did someone in your office miss the three month deadline for filing a trademark opposition?

2. Was this due to human error?

3. Was the human error that of someone in your office?

4. Was my decision an unfair summary of the patent office ruling as published?

5. Did the original decision by Ms Bracha, or the second one following the creative if somewhat strange reconsideration request report that someone in your office had made a mistake?

6. Was this a mistake by the Deputy Commissioner Ms Bracha?

7. If my report was wrong and misleading, how do you understand the third paragraph of the letter from your firm and line 5 of the appended affidavit of Adv. Liron Cohen of Dr Shlomo Cohen – Law Offices?8. If my report was wrong and misleading, presumably the affidavit of Adv. Liron Cohen of Dr Shlomo Cohen – Law Offices was inaccurate or misleading. In this case, why did Adv. Robert Doriano of your firm sign it?

Wishing you a Shabbat Shalom,
Dr Michael Factor

The response was somewhat abrupt, but hardly enlightening as to the grounds of his complaint:

Mr Factor,
I have no intention of engaging in your haggling.
Remove your falsehoods by noon Friday or face the consequences.

I find Dr Cohen’s attitude distressing. I try to fairly and objectively report on all decisions of the patent office and the courts. Where the identity of the legal representatives is pertinent, I think it is fair to report this. In this case, I believe it is fair and relevant.

Readers will note that Dr Cohen’s letter is titled “A further tortuous publication”. It refers to ‘once again’. For interested readers, in an earlier post, I referred to the Omrix case where Dr Cohen & Partners Law Offices represented the State of Israel against a company benefiting from a technology that the State of Israel considers to be based on service inventions.

I take exception to Dr Shlomo Cohen stating that his is not the first time I have acted maliciously in an attempt to twist facts and injure his firm. I try to report facts accurately.

Regarding lies, slander and defamation, it is pertinent to note that back in 2005 and 2007, Dr Shlomo Cohen filed suit in the Israel Magistrates Court, against Globes, an Israel business newspaper, making similar allegations. In her ruling, the Honorable Judge Oshri Frust-Frankel noted that “we are dealing with repeating a publication that benefits from complete and total defence, since that published was the content of a court ruling, that issued during legal proceedings…“. In her review of similar decisions, the Judge also noted that the “reporting should reflect that said or written in the proceedings being reported, and should be fair.” The second article, which published prior to the first case being ruled on, fairly reflected the decision of the court and was thus a permitted publication.

Of course, I can’t stop Dr Cohen from suing me if he feels injured. However, I have given him every opportunity to explain what his grievances are.  I suppose it would be churlish to point out that in a decision last week,  NIS 60,000 in legal fees were awarded against Dr Cohen when he lost an appeal for a frivolous lawsuit filed against Bezeq and Netvision that was thrown out by the court of first instance.  See ע”א 3407-09-12, שלמה כהן נ’ נטוויז’ן ואח’ / פס”ד.


Non-licensed practitioners

September 27, 2013

blazing saddlescrazy

Non-licenses practitioners come in different shapes and sizes.

General search terms from a computer in Israel, for ‘patents’, patent attorneys, Israel Patent Office, etc., turns up paid adverts from non-licensed practitioners, what I would call cowboys and cowgirls – self styled patent experts. Some of these refer to themselves as IP Managers. These tend to be paralegals who have set up by themselves and offer portfolio management services.

There are also self-styled patent writers, patent searchers, US licensed practitioners who are not licensed in Israel, would-be patent attorneys who can’t pass the exams, retired examiners and struck off IP lawyers from abroad.

Under Section 154 of the Israel patent Law it is illegal for anyone who is not licensed in Israel as a patent attorney or as an Attorney-at-law to draft patent applications, or to provide any IP services in Israel, including procedural work opposite foreign patent offices.

Section 154 is as follows:

Rights of patent attorneys

154. (a) Patent attorneys have the exclusive right to deal in Israel, for remuneration, with applications for patents, designs and trade marks and with the preparation of any document to be submitted to the Registrar, the Office or to an authority for the protection of industrial property in another country, to represent the parties and to handle and represent in any proceeding before the Registrar or in the Office.

(b) This section does not derogate from the right of an advocate or of a State employee to perform the said acts within the scope of his functions.

This Law should be read together with Sections 19 and 20 of the Israel Bar Law, and doing so makes it clear that providing IP advice (consultation) is also illegal for anyone who is not a licensed Israeli attorney-at-law, or a patent attorney.

Subsequent to both the Israel Patent Law and the law of the Israel Bar, there was a Basic Law, Freedom of Occupation. The courts have used this to find certain laws that restrict employment illegal. It is not inconceivable that a court would find a US patent agent working in Israel to help local clients file and prosecute patents in the US as doing nothing wrong and would limit the application of Section 154 Law that forbids them to do so. This is, however, speculation.

The Israel Patent Office website carries a warning:

הובא לידיעתנו, כי אנשים שאינם עורכי דין או עורכי פטנטים עוסקים לכאורה, בשכר, בפעילות שנתייחדה לעורכי דין ולעורכי פטנטים, ובכלל זה הכנת מסמכים המוגשים לרשם הפטנטים בישראל ובחו”ל, גם אם אינם חותמים על המסמכים בשם הלקוח.כל אדם מהציבור הזקוק לשירותי ייעוץ ורישום בתחום הפטנטים, סימני המסחר והמדגמים מוזהר בזאת שלא לפנות לאותם גורמים הפועלים בצורה בלתי חוקית, שכן הסתייעות באותם גורמים עלולה לגרום להם נזק בלתי הפיך.

This is a rough translation:

Let it be known that people who are not patent attorneys or attorneys at law apparently practice, for payment, services that can only be provided by patent attorneys or attorneys at law, including preparation of documents for submitting to the Israel Patent Office and to foreign patent offices, even if they don’t sign in the name of the client. Any member of the public who needs advice or registration services relating to patents, trademarks and designs is hereby warned not to turn to such illegal practitioners, since doing so may result in irreversible damage.

Unfortunately, (apart from this notice) neither the patent office, the Ministry of Justice, the Israel Bar or the Association of Patent Attorneys has done anything to combat the non-licensed practitioners who draft patents and give advice, based on a little experience as an inventor, a trainee attorney, as an examiner or as a paralegal, or based on having read a book like Patent it Yourself.

The cowboys are not only a problem to licensed practitioners. They are a problem to the wider public as well. As their work is illegal, they do not have and cannot have malpractice insurance.  This means that if they screw up, and this is not an unlikely scenario, the client has no recourse.

Patent Attorneys are bound by attorney-client privilege. Clients can discuss their inventions with licensed practitioners and if they have complaints about malpractice, can complain to the Israel Patent Office. The patent attorney could have his license suspended. Discussing with a cowboy practitioner provides no protection whatsoever.

There are some patent searchers as well that offer patentability searches direct to the public. Because patent attorneys are legally responsible for their opinions, they can’t compete on price with patent searchers who are often skilled in library science but don’t have an understanding of science or technology, and don’t have knowledge of patent law. I’ve seen searches from patent search firms that give patentability opinions. I think that this is illegal for them to do, and well beyond their competence.

What about foreign licensed practitioners who advise clients in Israel about the law in a jurisdiction that they are licensed in?

Gerson Panitsch is a partner of Finnegan, the largest US IP firm who spends time in Israel. He claims to advise clients regarding enforcement in the US, and does not practice Israel Patent Law. Under the Israel Law above, this does not matter. His practicing here is still illegal under Israel Law. Gerson Panitsch points out that Israel is obliged under International treaties to allow foreign law firms to set up branches here. Maybe he is correct. I don’t know. Even if he is, it does not make his activities in advising his Israeli clients, a legal activity.

It is not just Finnegan of course. Other large US patent litigation firms such as Quinn Emmanuel and Fish Richardson also come over to tout for litigation work in the US. Their running educational events like mock trials would not be considered illegal. Their advising Israel firms on IP litigation matters in the US at their hotel in Tel Aviv, would, however, appear to be illegal.

The territorialism of IP licenses is perhaps at odds with the multinational nature of patent law. Then again, if we accept that the majority of wealth in the twenty first century is in non-tangible assets such as patents and trademarks, it seems sensible and correct for governments to regulate the industry and set standards of minimum competence, and have procedures for suspending a license of someone who malpractices.

Lawyers, doctors and surgeons, nurses and others who are trained abroad are required to requalify in Israel. Why should patent attorneys be different? The Israel Law has procedures for waiving certain requirements, and a shortened internship may be in order. I think that foreign licensed practitioners wishing to practice in Israel should be required to pass an oral and written exam though, and to have at least a minimal competence in both Hebrew and English.

Since the US is the largest Jewish community in the diaspora, there are a large number of US patent agents and attorneys who immigrate to Israel and not all of these requalify locally. Some can’t be bothered to. Some can’t seem to be able to pass the exams. Some have trained as patent attorneys locally, past the US exams as patent agents but have not been able to pass the exams here. It would appear that their advising clients in Israel is against section 154 of the Israel Patent Law.

The United States Patent and Trademark Office (USPTO) is generally accepted as being the most important patent office in the world. For some technologies, such as fast changing fields like telecommunications for example, patent applications are often only filed in the US. Nevertheless, at least until the America Invents Act (AIA) which did a lot to close the gap between US patent practice and that of the rest of the world, the United States had the most unique and eccentric patent law of any economically significant regime, and possibly still does. Think first to invent, the applicant being the inventor by default and not his employer, business method patents, patents for methods of medical treatment, etc. The United States concept of Unity of Invention is different from that in Europe.

Perhaps because of the size of the United States market, very many United States patentees only file their applications in the United States. At international conferences, it seems to me very clear that US practitioners are less aware of patent laws and strategies in other jurisdictions. They seem to be less cosmopolitan in outlook and more parochial, than patent attorneys from elsewhere.

Use of a US provisional application as a priority document makes a lot of sense for a US inventor in the United States who would otherwise need a license to first file abroad. It makes far less sense to an Israeli who can first file in Israel, then expedite examination and get an indication of patentability from a patent office that is recognized to provide International Search Reports (ISRs). The Application may be abandoned before publishing if necessary.

On occasion, I have advised clients to first file in UK, in Taiwan, in the US (both provisional and non-provisional, in New Zealand and with a PCT application. The strategy I chose depends on where the markets are, where competitors are, where client is based, on the nature of the technology and other considerations. It is a generality, but I find that US attorneys are less knowledgeable about strategy. Perhaps in some cases, the US practitioner is not really competent to advise Israeli companies and inventors, because of a sort of blinkered vision?

So should a competent experienced US licensed practitioner have to requalify before giving advice to Israeli clients? I suspect that my US licensed friends will have a different answer to those licensed in Israel who see work being handled by US practitioners. But where the US practitioner is advising the Israeli client about US law, and drafts and files on their behalf in the US, does it make sense that the US practitioner can sit in New York or Washington and discuss the matter over the phone or by email with the client, but can’t legally meet the client in Tel Aviv or Jerusalem to discuss the matter?

“If the law supposes that,” said Mr. Bumble,… “the law is a ass—a idiot. If that’s the eye of the law, the law is a bachelor; and the worst I wish the law is that his eye may be opened by experience—by experience.”

That as may be. Should one take legal advice from someone who is flouting the law? I think not.

Immigration into Israel is not only from the US of course. There are ex-patent examiners from the former Soviet Union and Ukraine that havbe relocated to Israel. Should these be able to practice here without requalifying?  No doubt the US practitioners will have reservations about the patent regime that trained the Ukrainian patent attorneys and perhaps about their English skills – although in my experience, not only do Russian immigrants have vastly better English skills than the Russian skills of their US counterparts, but often have English skills that are almost mother tongue level.

I’ve been recently contacted by a South African Patent Attorney who has relocated here. No doubt his English skills are excellent. In South Africa, patents are allowed automatically without substantive examination, unless there is an attempt to uphold them against an infringer. Should the South African by able to practice without requalifying? I don’t think so.

In summary, I am in favor of the status quo that requires foreign trained patent attorneys and lawyers to have to pass exams to practice here, and think that local hands on practical experience is also of value. At present that is the law.  It is also apparently illegal for foreign patent attorneys to practice before their native patent offices from the territory of the State of Israel. I think that this could usefully be revisited.

It is a shame that the Israel Bar and the Association of Patent Attorneys in Israel does nothing about this. Nor do they act against those who have no license whatsoever from anywhere, but still draft patent applications, help clients file in Israel and elsewhere.

What about Israelis who practice abroad, in foreign jurisdictions?

This can work the other way as well. For example Pearl Cohen Zedek Latzer (PCZL) is an Israel Law firm that specializes in IP Law. They have set up a New York Office, and one in Boston.

None of the named partners, Pearl, Cohen Zedek or Latzer are licensed in the US however.

Zeev Pearl is the managing partner of the New York office and his name is on the door, but it appears that he is not licensed to practice law in New York or anywhere else in the US – either that, or he is very discrete about his qualification on the PCZL website.

Perhaps Pearl is careful to explain to everyone entering the US office that he is not licensed in the US and not qualified to give advice there.

There are also general Israel Law firms such as Shibboleth that have opened US offices.

I can’t opine about the legality of this situation since I am not licensed in the US.

For those interested in exploring this further, see

New York City : 1st Department, Chief Counsel, First Judicial Department, Departmental Disciplinary Committee, 61 Broadway, 2nd Floor, New York, NY10006, (212) 401-0800, Fax: (212) 287-104

Website: www.courts.state.ny.us/ip/attorneygrievance/complaints.shtml

Also see the unauthorized practice of law committee in New York.  Their contact information is as follows:

Kathleen Mulligan Baxter, New York State Bar Association, One Elk Street, Albany, NY12207, Tel: 518/463-3200, Fax: 518/487-5694

kbaxter@nysba.org

See also ABA Formal Opinion 01-423 Forming Partnerships With Foreign Lawyers (2001).

Report 201H (Licensing of Legal Consultant)

Report 201J (Temporary Practice by Foreign Lawyers) as presented by the ABA Multijurisdictional Practice Commission and adopted by the ABA House of Delegates in 2003.

See Also Report 107C as Amended by the ABA Ethics 20/20 Commission (ABA Model Rule on Pro Hac Vice Admission) that was adopted by the House of Delegates in 2013.


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