Arutz 7’s take on the 2013 Report of the Israel Patent Office

July 28, 2014

Arutz 7

In an earlier post, I summarized the 2013 Patent Office Report.

It is interesting to see what happens when journalists who are non-patent professionals analyze and report on the same data.

Arutz 7 is a nationalist news web-site.  It used to be a popular pirate radio station, but was eventually closed down in an en-banc Supreme Court Ruling, which gave the impression that the cutlass welding settlers were making Palestinian’s walk the plank. None of the eminent judges saw fit to refer to freedom of speech or to the classic Kol HaAm decision. Funnily enough, the same politicians who appealed to the Supreme Court against the pirates, nominated Voice of Peace pirate Abu Natan for a Nobel Peace Prize. It is a funny world, but I digress.

Anyway, Arutz 7 have published a write-up of the 2013 report. It may be found here.

What I find fascinating is that they see the main story that can be culled from the data is that the Israel patent office manages to get 99.7% of PCT filings to Geneva in under 4 weeks, where the majority of those held back have security related issues. To me, this statistic indicates that the PCT department works efficiently, but this is probably a factor of over-staffing as much as anything else, since to become an International Search Authority, the Israel Patent Office needed to reach 100 examiners and some of these pad out the PCT Department.

According to Adv. Emi Plimor, the Secretary General of the Justice Ministry, “this reflects the technological level, creativity and innovation of Israeli inventors”.

I am pleased that the Israel Patent Office is so efficient at forwarding applications, but I am not sure how significant it actually is. When it took them a couple of months, there were no repercussions that I am aware of. That said, the on-line payment innovation that saves having to go to the Post Office and then submit the payment physically is a great improvement from the perspective of the practitioner.


Israel Patent Office Awards Costs of 281,651 Shekels for Unsuccessful Opposition

July 14, 2014

costs

Rafael Advanced Weapons Systems LTD filed two patent applications, IL 149934 and IL 180478 “Airborne Reconnaissance System”, which were opposed by Elbit Electrooptical ELOP LTD.

IL 149934 was filed on 30 May 2002, and on allowance, published for opposition purposes in May 2007. Elbit filed an opposition, as did Elta – Israel Aircraft Industries.

Because of a divisional application,  IL 180478, the opposition was frozen until the second case was allowed and published for opposition purposes on in November 2009.  Both opposers opposed both applications. Since the cases were identical, the oppositions were combined.  The two cases were heard together, although they weren’t combined in a single proceeding.

When the oppositions were eventually dropped, the applicant applied for 711,263.79 Shekels in costs, providing an itemized table of charges for each action.

After reviewing the table and noting a mistake wherein 54,330.25 Shekels was listed instead of 543.3 Shekels, the opposer suggested that a total of 25,000 Shekels would be more appropriate.

In her ruling, the deputy commissioner ruled that for freezing the first opposition until the divisional application published, no costs were appropriate. On the other hand, she considered the full 24,180.73 Shekels charged for the second period, after the divisional application was allowed as being fairly charged.

She also allowed 100,470.58 Shekels for filing corrected statements of case, 150,000 Shekels as reasonable for the submission of evidence and 7000 Shekels for the charges for requesting costs. The total costs allowed were thus  281,651 Shekels, to be paid within 30 days, or interest would be accrued.


Comprising

July 8, 2014

Chinese patent

In patent claim language, the term ‘comprising’ is generally taken to mean that a claimed device or system includes the listed elements, but they are not necessarily a closed list. In other words, possibly the device or system includes additional elements. Similarly, a method comprising a list of steps may include additional steps not detailed.

There has now been a Chinese ruling to the contrary. Apparently the China Patent Re-examination Board (PRB) has maintained the validity of a patent by interpreting the term “comprising” of the challenged claim as “consisting of”, thereby narrowing the claim scope to avoid prior art.

The case relates to ceramic blasting beads, and an attempt to invalidate Pat. No. ZL200810045235.7 regarding a composition for “ceramic blasting beads” was overturned.

Claim 1 of the patent in question is clear and unambiguous, claiming a ceramic blasting bead comprising various oxides, including ZrO2 and HfO2; Al2O3 or CaO, etc. The petitioner asserted that claim 1 lacks novelty in view of the prior art which discloses all ingredients, and, in addition, two other elements, Y2O3 and CeO2. The patent owner argued that the term “comprising” in Claim 1 is intended to mean “including the following and excluding others” on the basis that the specification disclosed that the motivation of the invention was to provide a solution that excludes Y2O3 and CeO2. The plaintiff disagreed on the necessity to introduce the specification for claim scope determination under Art.59 on the reason that the claims are clear in and of themselves, and thee is no need to look to the specification for further clarification.

Under former Chinese practice, Article 59 teaches that the protection scope of an invention or a utility model patent is confined to what is claimed literally, and the specification may be used to interpret the claims when the claims are unclear by itself. However, in this case, the PRB gave a new understanding of Article 59 that under certain situations, one could also integrate the parts of the specification and the background art of the patent application for claim scope determination, so that the technical solution can be accurately conveyed from the claims, provided that the interpretation does not violate logic and common sense. The PRB further clarifies that introducing the specification for claim scope determination is not restricted to where a claim is unclear.

The Appeal Board reinterpreted Article 59 and concluded that “if a skilled person in the art based on the disclosure of the specification can interpret that certain technical features should be excluded, such exclusion is allowable under the circumstance that the claim terms are not obviously contradictory”.

There is a problem. Section 4.2.1, Ch. 10, Part II of the Chinese Examination Guideline clearly states that “comprising” means that some components which are not indicated in the claim may be further included in a claimed composition. Thus until now, a closed-ended interpretation that excludes features not specifically recited in the claim was untenable. Even though specific PRB decisions are not binding precedents, this decision creates a high degree of uncertainty for those who may wish to invalidate patents based on novelty and/or inventiveness, but may provide another option for patent owners to argue for narrower interpretation of the claims should new prior art be presented during invalidity proceedings that anticipates the originally granted claims.

COMMENTS

Since an Australian judge understood the term comprising as limiting, I’ve generally included a paragraph at the end of patent specifications to the effect that the term “comprising” means including but not necessarily to the exclusion of other elements or steps. In other words, the term comprising indicates an open list. A paragraph of this sort can save a lot of ambiguity, but in this case, might have sunk the application.

What is worth noting is that in the Australian case, the judge was a general judge. In this instance, the Chinese board is apparently a dedicated patent forum. In Israel, the patent examiners have a nasty habit of deciding that text of this nature renders the scope of protection ambiguous and request that such paragraphs are removed.

In general, I am not a great fan of boiler-plate text.  The problem is not that people use standard paragraphs. The problem is that they do so without thinking. This case emphasizes that every line of a patent application is a two edged sword in that what is added to widen the scope of a patent claim, invariably widens the prior art that can be cited against the patent as rendering it lacking novelty or inventive step.

Negative claiming is generally frowned upon as being indefinite. However, in this case it seems that if the invention is that the ceramic beads do not contain ceria or yttria, this seems to be what should have been claimed.

There are about 20 applications that I’ve written over the past couple of years that are currently under examination in China and Taiwan. I have to rely on associates for translating my specifications into the local vernacular and in accordance with local case-law. I know what I mean when I write the applications, but do not know what is before the Examiner. Office actions are translated into English for me, and I instruct an associate who responds in Chinese. This is rather like the party game Chinese Whispers. When cases are allowed, I can never really tell whether the claimed invention is what was intended, and recently, where drafting for a China based client, I have the CEO’s personal assistant double check the translation against my original before filing.


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

July 7, 2014

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

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

RULING

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

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

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

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

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

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

Ruling, Jacqueline Bracha, 30 June 2014

COMMENT

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


Opposition to IL 138831 “Gaze Actuated Information System”

July 3, 2014

heads up display

Rafael LTD. filed Israel Patent Application Number 138831 for a “Gaze Actuated Information System” in 2000 which was allowed in July 2007 and Elbit filed an opposition within the prescribed three months.

Asaf Ashkenazi, a director and VP MOP of Elbit and Mr Naftali Maimon, a marketing development worker at Rafael filed sworn statements. Mr Asaf Ashkenazi attempted to file an additional statement in response to that of Mr Naftali Maimon, but Adjudicator of  IP, Ms Yaara Shoshani Caspi threw out statements regarding the lack of utility and lack of industrial applicability that were considered as beyond the original Statement of Case.

In 2010, then Deputy Commissioner Noah Shalev-Smylovits heard the witnesses and their cross-examinations. The Commissioner Assa Kling decided to rule on the evidence submitted and the transcripts of the hearing.

Apparently the system provides audible warnings to the pilot, follows the pilot’s eye movements and simplifies the visual display. The system results in lighter helmets and simpler heads-up displays than those previously known.

The patent was sought on tracking the pilot’s eyes rather than in directing the pilot’s gaze. The claim set included three independent claims for the system and method and 15 dependent ones.

Claims 1 and 14 are as follows:

1. A method for providing a pilot with information associated with at least one region of a field of view visible to the pilot from within a cockpit without requiring a visual display, the method comprising steps of:

(i)                 determining an eye gaze direction relative to a given frame of reference for at least one eye of the pilot by:

(a)   employing a helmet-mounted system to derive direction information related to a relative eye gaze direction for at least one eye of the pilot relative to a helmet worn by the pilot,

(b)   deriving position information related to a position of said helmet within a cockpit, and

(c)    processing said direction information and said position information to derive said eye gaze direction relative to a frame of reference associate with said cockpit;

(ii)               determining a reference direction relative to said given frame of reference;

(iii)             comparing said eye gaze direction with said reference direction; and

(iv)             if said eye gaze direction and said reference direction are equal to within a given degree of accuracy, generating audio output audible to the pilot and indicative of information associated with said reference direction.

 

14. A method for providing to a pilot confirmation that a weapon system is locked-on to a visible target without use of a visual display, the method comprising the steps of:

(i)                 determining an eye gaze direction relative to a given frame of reference for at least one eye of the pilot;

(ii)               determining a target direction representing the direction relative to said given frame of reference from the weapon system to the target to which the weapon system is locked on;

(iii)             comparing said eye gaze direction with said target direction; and

(iv)             if said eye gaze direction and said target direction are equal to within a given degree of accuracy, generating a predefined audible signal to confirm that the weapon system is locked-on to a target at which the pilot is currently gazing.

Elbit claimed lack of novelty / inventive step and opposed the patent under Sections 4 and 5 of the Israel Patent Law. They cited the following prior art:

[1]U.S. Patent No. 5,583,795  “Apparatus for measuring eye gaze and fixation duration, and method therefor”.

[2] U.S. Patent No. 4,196,474  “Information Display for air traffic Control”.

[3] U.S. Patent No. 4,935,885 “Method and apparatus for determining weight and center of gravity of a vehicle“.

[4] U.S. Patent No. 5,602,543 “Detection system for use in an aircraft”.

[5] U.S. Patent No. 5,978,715 “Apparatus and method for aircraft display and control”.

[6] U.S. Patent No. 5,647,016 “Man-machine interface in aerospace craft that produces a localized sound in response to the direction of a target relative to the facial direction of a crew “.

[7] U.S. Patent No. 3,617,015 מיום 2.11.1971, שכותרתו: “Head-coupled missile-aiming device”.

[8] U.S. Patent No. 5,790,085 “Portable interactive heads-up weapons terminal”.

[9] U.S. Patent No. 5,296,854 “Helicopter virtual image display system incorporating structural outlines”.

[10] U.S. Patent No. 5,931,874 “Universal electrical interface between an aircraft and an associated store providing an n-screen command menu”.

[11] U.S. Patent No. 4,288,049  “Remote targeting system for guided missiles”.

[12] U.S. Patent No. 6,455,828 “Method for remote-controlled combat of near-surface targets”.

[13] U.S. Patent No. 4,449,787  “Night vision imaging system adapted for helmet mounting”.

[14] U.S. Patent No. 4,287,410  “Double purkinje eye tracker”.

[15] U.S. Patent No. 5,726,671  “Helmet/head mounted projector system”.

[16] U.S. Patent No. 4,852,988  “Visor and camera providing a parallax-free field-of-view image for a head-mounted eye movement measuring  system”.

[17] U.S. Patent No. 4,634,348 “Head and/or eye tracked optically blended display system”.

[18] U.S. Patent No. 4,028,725  “High resolution vision system”.

[19] U.S. Patent No. 4,034,401 “observer identification of a target  or other point of interest in a viewing field”.

[20] : “Rash et al, Design issues for Helmet-Mounted Display Systems for Rotary-Wing Aviation, USAARL Report No. 98-32 Fort Rucker, AL: U.S. Army Aerodynamical Research Laboratory, July, 1998″.

[21] Kopp, Helmet Mounted Sights & Displays, Air Power International, Vol. 3 No.1, July 1998, pp. 54-57.

[22] “Wenzel and Foster, Virtual Reality: Principles and Applications, Piscataway, NJ: The Institute of Electrical and Electronics Engineers, 1993.

[23] “Begault et al, Augmented TCAS Advisories Using a 3-D Audio Guidance System, Proceedings of the Ninth International Symposium on Aviation Psychology the Ohio State University, Columbus Ohio, 1997.”

The claims for lack of inventive step were based on single publications or their combination with any one of several others. In other words, Elbit was claiming lack of inventive step n the basis of 1 or 2 publications, but Rafael would have to relate to various combinations and permutations to overcome the objection.

Ruling

In oppositions, the onus is on the patentee to prove patentability.

The issues raised included whether tracking a head position and tracking eye movement were identical, and whether improvements could be considered engineering improvements or inventive ones. The main citations were examined in length. Eventually claim 1 was upheld, claim 14 and its dependencies were rejected, and applicant was ordered to correct a typo in claim 6 which related to 50° instead of 5°.

 


Public Interest as Grounds for Accelerated Examination in Israel

June 29, 2014

Eruv

In Israel, patent applications are provisionally categorized into technology areas by the Israel Patent Office on receipt. Applications are then examined in turn by the examiners assigned to the specific technology area.

There are various ways to have an Application examined out-of-turn, by requesting accelerated examination with due cause, if the application is environmentally friendly (green classification), if the applicant is old or ill, or by using the PPH mechanism where there is a corresponding application abroad that has already been examined.

Section 19a(a)5 provides public interest as grounds for accelerating patent examination in Israel. In a ruling concerning Application 216870 Cimas LTD, the patent office ruled that examining in turn was essentially in the public interest, and that to examine something out of turn, requires extraordinary justification.

IL 231173 is titled “A Halachic and technological Eruv”, and accelerated examination was requested on the grounds that it contributed to the quality of life of the Halachically Observant population in Israel.

The Commissioner of Patents, Assa Kling refused the request, since he did not think that this was what the legislature intended when they allowed Public Interest as grounds for Accelerated Examination. He went on to rule that “Public Interest” implies a specific public interest, and this wasn’t shown here. The application is queued for regular examination.

COMMENTS

Jewish Law prohibits Jews from carrying in the public domain on Shabbat (the Sabbath).  An Eruv is a Halachic device developed by the Rabbis for reclassifying public domain as communal domain, thereby allowing carrying therein. Essentially, an area is enclosed by a symbolic boundary, often comprising poles connected by string and this makes it semi-private or communal.

Approx. 25% of the Knesset is Shabbat Observant and this is reflected by the percentage of observant members of the Israeli public. Carrying on Shabbat affects this sector of the population once a week. An Eruv makes a significant difference to the quality fo life of this significant minority of the population. Unlike a lot of religious initiatives, developments and legislation that adversely affects the quality of life of non-Jews and secularists, it is difficult to see how this type of development can adversely affect anyone, at least not in Israel. (In London, there were assimilated Jews who complained that the Eruv made them feel that they lived in a ghetto. Possibly this argument holds true abroad, but Israel is a Jewish state and anyone having a problem with religious neighbors is simply xenophobic and anti-Semitic).

I find it difficult to imagine that over-riding public interest should be limited to things that affect a higher percentage of the population than 25%, more of the time than one full day a week.  It could be that applicant,  Shira Attia, who appears to be unrepresented, failed to make her case properly. Nevertheless, despite whether the Commissioner himself has a problem with carrying on Shabbat, he should be aware that a lot of Israelis do.


IL 195087 Throwing out an Opposition

June 28, 2014

throw out

Novartis filed a patent application, IL 195087, which was eventually allowed and published for opposition purposes on 31 October 2012. Unipharm filed such an Opposition on 3 January 2013, and claims and counter-claims were exchanged. On 2 October 2013, the director of Unipharm, Zebulun Tomer, filed an affidavit.

In response, and in consequence of the nature and contents of this evidence, on 26 November 2013, Unipharm requested that the opposition be thrown out.

Novartis, represented by Luzzatto et Luzzatto, claimed that Unpiharm was misusing the patent opposition procedure by filing a response to the Counter-Statement of Case in the guise of a submission of evidence. As an alternative position, the Applicant was willing to accept that the Evidence be deleted.

In response, the Patent Office noted that courts allow cases to be thrown out in exceptional circumstances, such as Appeal 693/82 Shemesh vs. The Land Registry P.D. 40(2) 668, 671-672 (1986).  Similarly, the Patent Office is willing to throw a case out only in extreme cases (See then Deputy Commissioner Axelrod in 122161, 122162, 122118. Warner Lambert Co. vs. Unipharm, 14 May 2001 :if in a regular Civil dispute, throwing a case out is an extreme measure, how much more so in patent oppositions”. This is particularly the case with patents, since there is a public interest that the patent register remains clean. Essentially, frivolous law suits without a chance of success may be thrown out in early stages, but once the case has started, the sides deserve their day in court. In Warner Lambert, Unipharm didn’t bother filing an affidavit, and the case wasn’t thrown out, so it seems clear that in the present case, where there was an affidavit, albeit arguably a problematic one, clearly there wasn’t sufficient grounds to throw out the case.

With reference to the specific case, the Affidavit seemed top follow the original Statement of Case and didn’t seem to be a widening of the grounds for opposition. Novartis failed to explain why they considered it unacceptable.

The request to throw out the case was thrown out, and the Novartis and costs of 5000 Shekels were awarded to Unipharm.

COMMENT

Whilst there are some patent oppositions that are filed for economical reasons where sometimes there may be minimal legal justification, Unipharm has a strong track record of successfully opposing patents and voiding issued patents. we watch developments with interest.


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.

 


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?


Novartis Attempts to Get Unipharm’s Opposition to IL 195087 Thrown Out

June 16, 2014
Opposition

Opposition

Israel Patent Application Number IL 195087 to Novartis titled “ANHYDROUS LACTATE SALTS OF NHYDROXY-3-[4-[[[2-(2-METHYL-1HINDOL-3-YL)ETHYL]AMINO]METHYL] PHENYL]-2E-2-PROPENAMIDE AND PHARMACEUTICAL COMPOSITIONS COMPRISING THE SAME” was allowed and published on 31 October 2012 for opposition purposes. On 3 January 2013, Unipharm opposed the patent.

After managing to prevent the submission of new evidence, Novartis (represented by Luzzatto et Luzzatto) applied for the opposition to be thrown out claiming that the the opposition had misused the system by submitting new evidence in the guise of responding to applicant’s response to the original opposition.

In his ruling, Commissioner Kling quoting former Deputy Commissioner Axelrod in Oppositions to IL 122118, 122162, 122161 to Warner Lambert Company (also opposed by Unipharm):

If in civil legislation the courts are very reluctant to throw cases out without a proper hearing, how much more so when dealing with a patent opposition [due to the public interest in preventing patents to wrongfully issue]

He went on to quote opposition 121052 Raytheon vs. EL-OP tot he effect that oppositions should only be thrown out if it is clear that they have no chance of succeeding.

 Finally, the Commissioner went on to state that the applicant had not made a strong case that the behavior was inequitable and the additional material was mentioned in the original Statement of Claims.

The attempt to have the case thrown out was thrown out, and costs of 5000 Shekels were awarded against Novartis.

COMMENTS
The decision is correct. In oppositions, both sides typically sail close to the wind with regard to tactics. Unipharm and their representative, Adv. Adi Levit, have a high success rate in opposing pharmaceutical patents that have been subsequently endorsed by the courts.

It will be interesting to see how this case develops.

 


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