Israel Supreme Court Issues Long Awaited Decision regarding Service Inventions

July 23, 2015

employment agreement

Isscar is a leading Israel company that manufactures hard metal cutting tools. As an employee at Isscar, Gidon Barzani was involved in the development of hard metal cutting tools at Isscar during the years 1992 to 1995, and again between 1997 and 2001 and was involved in a certain service invention, his actual contribution being a matter of contention. The employee signed various documents that gave up on monetary claims.

In Israel, an employee invention is owned by the employer. However, under Section  134 of the Law, the employee is entitled to compensation, the amount of which is determined by a special committee under Section 109.

The Committee, at the head of which sits the retired Supreme Court Justice, Itzak Englard, the Commissioner of Patents and an university professor, rejected Barzani’s claims as he had had waived his rights to consideration for the inventions when he signed on the general waiver.

Barzani appealed to the Supreme Court as a High Court of Justice (BAGATZ) see here which resulted in the committee freezing its actions.

One of the more interesting legal questions is whether a general waiver as part of the employment contract, where no invention is yet conceived can be considered as legally binding. (Talmudist’s may note a similarity to discussion of unlaid eggs).

The Supreme Court rejected the appeal arguing that it had limited power to interfere since under Section 111, the Bagatz ruling was final. The Supreme Court ruled that Section 134 describes a non-cogent right that is not a socialist employee right that requires special defense. On the face of things and with deference to the language of the clause, the decision appears to be correct, and certainly is sufficiently reasonable that there is no justification for court interference.

Nevertheless, the court noted that in a dynamic and changing world there is room for additional legislation or for companies to come up with voluntary compensation schemes. However, there is no reason for the court to interfere.

Judge Reuven, Deputy President of the Supreme Court quoted Section 109 of the Law as follows:

Where there is no agreement providing compensation to the employee for his service invention, regarding the amount of compensation and the conditions, these will be determined by the Committee for Compensation and Royalties.

Section 111 fixes the finality of the committee’s decision, but there is no doubt that in extreme circumstances, the Supreme Court sitting as a High Court of Justice can interfere. Since, however, the committee includes a retired senior court justice, the commissioner and an academic, interference in its conclusions are likely to be minimal, and this instance does not justify the court’s involvement.

The main argument, following the Actelis ruling of 2010 is concerned with the question of whether Section 134 should be considered cogent or dispositive. The committee came to the conclusion that it is not a cogent right and is not an example of employer-employee labour law where (due to the inherent differences in power between the sides) workers’ rights require special protection. The ruling seems to be correct, but anyway, since the Law states that the committee’s rulings are final, there is no room for the court to interfere.

Nevertheless, the court has criticized the current situation and noted that common sense and natural justice indicate that there is room for a more equitable arrangement,  whether the result of voluntary agreement or of legislation, and such arrangements exist in the private sector.

4353/14 Appeal to Supreme Court, Barzani vs. Isscar, Ruling by Rubinstein Fogelman and Mazuz 8/7/15

COMMENT

There was a lot of interest in this case, and we believe that employers will be giving deep sighs of relief. Employees will probably feel that the system favours the company against the individual. I am aware that some academics have strong feelings, see for example, Dr Shlomit Ravid’s position here and here.

Since the court has criticized the committee’s ruling and is not prepared to get involved, it is not inconceivable that a future committee could reach the opposite conclusion. Indeed, one of the judges of this ruling might, on retirement, sit in such a committee. There may, therefore, be room for clear legislation on the issue.

Personally, I think the Supreme Court decision is correct. I encourage corporate clients to institute compensation programs or at least weekend breaks and the like to encourage employees to come forwards with ideas, but think that changing the law in Israel may result in multi-nationals taking their R&D centers elsewhere, and that is not good for the economy or the workers.


A lack of uniformity in unity of invention

July 20, 2015
UNity
As Israel’s leading IP blogger, I regularly get emails and phone calls from students, inventors, academics and professionals, both from Israel and abroad, about various aspects of patent and trademark practice.
Most recently, I received an interesting question on what constitutes unity of invention. The question is rather better than the answer.
All regimes require unity of invention. One is entitled to protect one invention in a single patent. There are separate issues regarding double patenting, i.e. protecting the same invention with more than one patent, but, how is a single invention determined?
The practice relates to claims and differs in different jurisdictions.
In the US, unity seems to depend on the main class that the Examiner classifies the invention as and has to search when evaluating novelty and non-obviousness. One can file up to three independent claims (regardless of type) for the same basic price. However, there is no limit on the number of independent claims in the same class, since the searching requires trawling the same material.
US Examiners love to issue restriction orders due to multiple inventions, and sometimes do this based on the figures. They may require a restriction to a product or process, but may also require an election of a preferred species where different figures show different embodiments. However, once a structure is allowed, corresponding and withdrawn method claims can be allowed and rejoined so long as the method requires using the allowed apparatus.
In Europe, the theory relates to the inventive concept to be searched. In practice one is entitled to one independent method claim and one independent apparatus claim. Anything else and the claims will be reject as ambiguous.
It will be appreciated therefore, that the same claims may be considered as having unity in US but not in Europe and vice-versus.  Indeed, with two independent method claims and two independent structure claims each with minor differences, I’d expect the USPTO examiner to want inventor to elect either method claims or structure claims, and EPO examiner to want one of each.
In Israel (and there is no logic to this – it was a circular from Previous Commissioner, Meir Noam), one is entitled for up to two claims of each type. this can be method, product, system, gene sequence (now no longer patentable anywhere else).
Examiners will require restrictions on unity considerations, but there is no clear definition of unity. If a foreign patent office allows a set of claims one can request allowance under Section 17c and the issue of unity is not a grounds for objection by examiner or in opposition. What this means is that something acceptable in the US or in Europe (or in UK, Austria, Australia and other jurisdictions recognized in Appendix B for purposes of Section 17c) is acceptable in Israel. Since US and Europe have different standards, it will be clear that there is no clear standard in Israel.
See http://blog.ipfactor.co.il/2010/02/03/israel-patent-office-to-allow-no-more-than-two-independent-claims-of-each-type/ for more information.

 


Novartis – Double Patenting in Israel

July 1, 2015

novartis

The present ruling relates to the issue of identical of overlapping patents and patent applications, and examines the ramifications of double patenting in Israel.

IL 2039732 is a Divisional Application of IL 176831 titled “Compressed Pharmaceutical Tablets or Direct Compression Pharmaceutical Tablets Comprising DRR-IV Inhibitor Containing Particles and Processes for their Preparation”.  During prosecution it received a final rejection and the Applicant, Novartis, appealed this final Examiner’s rejection.

The Examiner considered that the claims of the parent and the divisional application are directed to the same invention. After this issue was first raised, the Applicant amended the claims, but the Examiner considered that the amended claim set (claims 1-23) covered the same invention as claims 23-26 of the parent application. Based on 5293/93 Welcome Foundation vs. Patent Commissioner (1993), the Examiner rejected the claims of the divisional application. A telephone conversation was to no avail. The Examiner issued a final rejection noting that there were substantive issues not addressed, and the Applicant appealed this decision to the Commissioner of Patents claiming that the issue is one of interpretation of the Law.

The Commissioner held a hearing and allowed the Applicant to present a short summary of the comparative law in US, Europe, Australia, Japan, China and India. In this instance, the Examiner did not claim that the divisional had identical claims to the parent application, but that there was some overlap. According to the Commissioner, the issue is one of interpretation of Sections 2, 8 and 9 of the law. These state that an inventor is entitled to a patent, that a patent can only cover one invention and that where two or more applicants file for the same invention, the first to file is awarded the patent. The purpose of divisional applications is to prosecute additional inventions claimed within the same parent application.

In the Welcome case, claims 1-10 related to uses of a pharmaceutical preparation in the treatment of various diseases and claim 15 related to a method of preparation of the active ingredient.  Then Commissioner, the late Michael Ophir ruled a claim for use in preparing a medicament’ and ‘use in the treatment of’ were identical. He did not see that the application related to more than one invention. On appeal, Judge Winograd ruled that one can file and prosecution an application for a material, a second one for the method of fabrication and a third one for uses, provided each application is directed to patentable subject matter and there is no overlap between the cases. There Judge Winograd went on to rule that one application cannot include more than one patentable invention, i.e. one should not award more than one patent for one invention, and this is a corollary of Section 8 that a patent should cover one invention. One can file a plurality of applications for a plurality of related patents provided that each one is directed to a patentable invention and the claims are not identical or overlapping.

In the present case, both the parent IL 176831 and the divisional application IL 203972 have the same title. In IL 203972 there is one independent claim. Claims 23 and 24 of the parent IL 176831 each depend on claim 1, and claims 25 and 26 are dependent on claims 24 and 23 respectively.

The independent claim of IL 203972 is directed to using a powder to form a pill for treating a wide range of ailments. Claims 23-26 of the parent IL 176831 are directed to forming tablets and a corresponding process. The divisional relates to various states that are not in the parent application, but both applications have the same specification. According to the Applicant, the parameters are identical but the parent claims the process whereas the divisional application claims use of the active ingredient to prepare a pharmaceutical.

According to the Examiner, the divisional application claims the use of a formulation for treating a disease, where the formulation is given in claims 23-26 and the diseases treated are listed in claims 1-22. In both cases, the formulation is the same, the particle size is the same and the active ingredients and additives are the same as those given in claims 23-26 of the parent.

Novatis found the Welcome decision poorly claimed and poorly reasoned and could not see why two applications could not claim identical or overlapping inventions. They argued that where applicants are the same, there is no need to relate to identical or significantly overlapping claims, holding that the Israel Patent Law does not prevent multiple patenting. Novartis argued that Section 2 is merely a declarative statement that the applicant may file a patent. It does not have legal ramifications, and certainly does not limit the number of patents that the applicant may file. Section 2 does include the word “one” and it should not be read into the claim such that one patent may be requested for one invention. Support for this interpretation is found by contrast to Section 9 which relates to different applicants with patent applications for the same invention.

The parties are in agreement that different applicants cannot be awarded separate patents for the same invention. Novartis holds that the same applicant can be awarded two or more patents for the same invention. The Examiner disagrees. Novartis accepts that there is no economical justification or logic in an applicant having more than one patent, and even sees this behavior as unacceptable. However, so long as there is some difference between the two patents, it is legitimate to award the protection of both patents.

The Commissioner upheld the Examiner’s conclusion and ruled that so long as there is nothing in claim 1 of the divisional that exceeds the scope of the claims of the parent, there is no reason to allow the divisional.

COMMENTS

In the US, the issue of double patenting is dealt with by filing a terminal disclaimer. Although this procedure prevents extending a term of protection (sometimes called ever-greening), it still has negative ramifications. Third-parties such as an alleged infringer may have to show that he is not infringing a number of overlapping patents. Likewise, a competitor may have to show a number of similar patents are invalid or not infringed. This places an unnecessary burden on third parties.

I think that although Novartis is correct that the Law does not explicitly prohibit multiple patents for the same invention, the Commissioner is correct that not to allow it is a reasonable interpretation of the intention and spirit of the law. Because of the large sums of money involved with pharmaceutical patents, this decision may well end up being appealed to the courts. If that happens, we will see how the Israel courts consider double patenting.


The obligations of a business partner to further an inventor’s patents and product

June 9, 2015

mines This ruling on Appeal by the Supreme Court relates to patents.

Avichai Madmoni, an inventor, sued Ahidatex Nazareth (1977) LTD, Abraham Hazor and Export Erez US Inc. and Export Erez Israel LTD. for failing to successfully commercialize his invention. Judge Barak-Erez summarized the dilemma before the court as follows:

A new invention is dreamed up by a person who then engages with a commercialization company to realize the product via patent registration, manufacture and marketing.  The relationship is less than successful in that registration took place in one country only and the invention was never realized in a commercial product.  Is the commercial company at fault, or does the failure of the product commercialization reflect mistakes of the inventor and market forces that are beyond the control of the commercialization company?

Avichai Madmoni has military field experience which led him to invent a device called a ‘sapper’s sandal’ that protects foot soldiers from mines. Over the years, Madmoni made various improvements, and the following discussion refers to the ‘old sandals’ and the ‘new sandals’. In the distant past, Madmoni sued a different service provider he’d engaged to commercialize the old sandals. He managed to prove that that company had not kept him informed on the scale of the sales and Judge M. ND”V had ruled (Civil Ruling 3509/96) that he was entitled to compensation. Following this ruling, Madmoni and the earlier service provider came to a contractual understanding that Madmoni would forfeit the compensation and would be entitled to sell the old sandals. In February 2000, Madmoni contracted Ahidatex Nazareth (1977) LTD to commercialize his Sapper’s Sandals. Abraham Hazor was the CEO of Ahidatex Nazareth (1977) LTD and the two Export Erez companies were share holders in Ahidatex Nazareth (1977) LTD. The contract related to the marketing and development of the Sapper’s Sandals, and for the registration of patents thereon in accordance with requests from Admoni. The contract stipulated royalties and a requirement to detail sales in the event that Ahidatex manufactures and markets the different sandals and obliged Ahidatex to carry the costs related to the sandals and to finance the patent registration, as stated in the following paragraph (my translation with the parties as identified by the judge):

[Ahidatex] undertakes to finance the drafting and registration of patents in Israel and the world, if requested to do so [by Madmoni], via the attorneys to be selected [by Madmoni] – this on condition that the manufacturing and marketing rights accruing from the patent if developed and registered, will be transferred to Ahidatex as a condition of this agreement, and all with the agreement and approval of [Ahidatex].

 Following this initial agreement, the sides signed other documents. In 2002 Madmoni signed a document assignment his invention to Ahidatex, and a further document that stated that the rights were assigned in light of and in accordance with that stated in the original contract from 2000. In 2004 a further contract was signed that stated that it did not cancel the original contract by that it introduced a number of modifications, including Ahidatex’ financial obligation and Madmoni’s involvement in sales. In the years following the original contract between the parties, there were various steps taken to advance the invention. On 18 March 2002 a new patent application was filed in the US that related to the new sandals, and this eventually issued as US 6,751,892  ” Minefield shoe and method for manufacture thereof ” however corresponding patents were not registered in other jurisdictions. Madmoni was not happy with the relationship with Ahidatex and negotiated to terminate the relationship, and the parties agreed that if Madmoni pays $350,000 to Ahidatex, the commercialization rights would be transferred back to him. To facilitate this, Madmoni contacted a third party, Lior Stitching LTD, to undertake the manufacture and to pay the $350,000 to Ahidatex. Since the patent was ONLY filed in the US, Lior Stitching did not accept the agreement. At this stage, Madmoni sued the defendants in the Jerusalem District Court (Civil Complaint 3070/09), arguing that defendants had violated their contractual agreement and caused him heavy losses.

Madmoni argued that the defendants had failed to file the patent applications in other jurisdictions and had failed to effectively market the Sapper’s Sandals to the Israel Defense Forces and other potential customers. Ahidatex counter-sued Admoni for revealing trade secrets to Lior Stitching, and for return of money they had paid him (Civil Complaint 3551/09). Judge Jacobi of the Jerusalem District Court rejected both the complaint and the counter-complaint in a ruling of 24 June 2012. The District Court reviewed the contracts and heard witness testimony and concluded that there was no breach of contract. The District Court did not find that Ahidatex had contractually obliged itself to file patent applications in other jurisdictions but only if requested to by Madmoni. The District Court found Ahidatex obliged to prosecute the pending patent applications but not to file them unless Madmoni specifically requested applications be filed. Consequently, Madmoni himself was responsible for their not being additional filings. Furthermore, Madmoni himself knew that the patent was not filed in Israel and that the corresponding European application was abandoned.  As far as the old sandals were concerned, Ahidatex was not obliged to market these, but was merely entitled to. As to contracting the Israel Defense Forces, the District Court considered that Ahidatex had acted reasonably and could be held responsible for the failure of the IDF to express an interest. The counter-case was dismissed as being a reaction to Madmoni’s filing suit and lacked inherent validity.

THE APPEAL

Madmoni contended that it was clear to Ahidatex that they should file more widely and in particular, should file applications in Israel and Europe. He alleged that the assignment gave Ahidatex, as the more experienced partner, free reign to file wherever they wanted. Consequently, he didn’t contemplate the eventuality that Ahidatex would not file in Europe and Israel. Madmoni alleged that the District Court had erred in their understanding of the contractual relationship and had ignored provable evidence that Ahidatex had failed to fulfill their obligations. Madmoni also alleged that Ahidatex had been tardy in negotiating with the IDF. Madmoni further accused Hazor of negligence and inequitable behavior and thus considered the District Court had erred in dismissing charges against him. The defendants requested that the Appeal be dismissed on the grounds determined in the Court of First Instance. The Appeal was essentially against factual and not legal determinations and was thus an illegitimate attempt at forcing a retrial. The Supreme Court suggested that the parties attempt mediation but this was not successful.

RULING

After reviewing the case, the Supreme Court upheld the District Court’s findings and dismissed the appeal. The defendants had not undertaken to absorb any and all costs in patent prosecution but merely to underwrite the cost of prosecuting and maintaining the patents filed by Madmoni himself. The Supreme Court also did not see fit to interfere with the District Court’s findings that the IDF’s failure to purchase the product was the result of Ahidatex’ poor marketing. As far as equitable behavior of the CEO, despite accepting that the obligation on the CEO and investors should be interpreted widely, the court did not see fit to find them responsible in this case. There is no doubt however, that this is one of those difficult cases, not because of the legal aspects, but because of the sorrow and feelings of loss of an inventor whose hopes are dashed. Nevertheless, the court did not find that legal obligations towards him were ignored. The decision was upheld but no costs were awarded.

Civil Appeal 7300/12 to Supreme Court concerning Madmoni vs. Ahidatex et al. The ruling by Judge Barak-Erez, with Judge Rubinstein and Chayot concurring, 3 June 2015.  

COMMENT

The ‘Sapper Sandal’ or ‘minefield shoe’ is a sort of snow shoe with a large surface area due to inflatable pockets underneath that engages a soldier’s boot. I have no doubt that it spreads pressure over a larger surface area and that it reduces sudden pressure. It should, therefore, have some efficiency against mines of various sorts. On the other hand, it may be less successful than the inventor imagines, and I suspect will make walking difficult. That as may be, having a patentable invention is not necessarily the same as having a workable solution.

I do not know if armies need a solution for a soldier to cross a mine field or a way for clearing mine fields. I do not know if this solution has military value. Presumably, however, the Israel Defense Forces is quite capable of such a determination. If the Israel Defense Forces IDF had adopted the idea but manufactured without Ahidatex, there would be some argument that failing to file in Israel had caused damage. This does not, however, attribute this damage to Ahidatex rather than to Madmoni.

In general, military hardware inventions should be filed in the US, Europe and Israel to cover major manufacturers. This particular invention is low tech and could be manufactured widely and if it works, could be of interest in all conflict zones.

In my experience, inventors sometimes have unrealistic expectations.  They get emotionally attached to their solutions, whereas commercial entities are more likely to be motivated by commercial considerations. It is an unfortunate characteristic of entrepreneurship in general, that one cannot know up front what is the correct strategy, and patents of this type, are, by their nature, aimed at creating new markets. If there is a real need, someone else may come up with a competing product that is as good or better, or merely cheaper. Finally, it should be appreciated that when entering into contracts, both parties should be very careful that the contract is clear and unambiguously covers all eventualities. This can avoid unnecessary litigation from which all parties (except for the attorneys) lose.


Does Size Matter? Dun & Bradstreet Publish their Silly Stats Again

June 2, 2015

1.Does Size Matter

Dun and Bradstreet has published their annual IP rankings once again. See here for the Globes article based on the Dun & Bradstreet 2015 rankings.

As readers of this blog will know, I consider the rankings infantile. D & B ranks based on the number of patent attorneys and this year, Reinhold Cohn with 43 patent attorneys has been knocked off its perch as Israel’s largest IP firm by Pearl Cohen, the new branding of PCZ”L that allegedly employs 46 patent attorneys. It seems that Dun & Bradstreet would fail their matriculation in both Maths and Geography.

The problem is that whereas Reinhold actually employs 37 patent attorneys in Israel and a further several attorneys-in-law that work in Intellectual Property, and these are all bona fide employees or partners and are all licensed, Pearl Cohen does not employ 46 patent attorneys in Israel.

Unfortunately, Pearl Cohen and D&B are somewhat misleading regarding what a patent attorney is, what an Israel licensed patent attorney is, what an Israel firm is, what an employee is and what part of the world may be considered part of Israel.

Allow me to elaborate:

1. There is a confusion between general attorneys-at-law and patent attorneys. The 55,000 odd Israel licensed attorneys-at-law may practice before the Israel patent office, but only a small fraction have any IP competence whatsoever, and a smaller fraction still understand anything about patents.

2. To practice before the USPTO one needs to be an US Patent Agent or a US Patent Attorney.

3. Pearl Cohen has a US office, a Boston office and a UK office. The employees of these offices cannot be considered as being part of an Israel firm, unless, of course, one considers Finnegan, the US’s largest IP firm as being an Israel IP firm by virtue of their Israel office and website. Finnegan has only one attorney, Gerson Panitch, based, part-time in Israel (he is actually based in Washington DC according to Finnegan’s website). If Finnegan is an Israel IP Firm, they are clearly larger than Pearl Cohen. Actually, from his profile, I am not sure that Gerson is a patent attorney licensed to practice before the USPTO, but that’s beside the point. According to the warning previously published on the Israel Patent Office website, it is also illegal for anyone other than Israeli attorneys-at-law and Israel patent attorneys to advise clients in Israel:

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.

This is based on Section 20(4) of the Israel Bar Law (Professional Ethics) 1988 which forbids anyone who is not a licensed attorney-at-law in Israel (or an exception, such as a Patent Attorney for IP Law) from giving legal advice. Note, I am not sure that the Israel Patent Office’s interpretation of this law is in accordance with International Obligations, and arguably (as Mr Panitch argues), a US attorney can advise re US law. Even if he is correct, I suspect that the advice will be lacking when it comes from a US attorney not licensed in Israel, as there are Israel tax and other issues that affect the decision making process. Consequently, even when the jurisdiction of interest is the US, China or Europe, an Israel firm is advised to work with foreign counsel via a local practitioner.

The one shop model of a firm with US, Israel and European offices is also, not necessarily in the client’s interest. If a local firm drafts the application and a separate US firm (and not a branch of the same firm) makes a decision regarding whether or not to litigate in the US, it is likely that the additional level of review will avoid the filing of frivolous law suits such as the Source Origin case.

4. An employee is someone who works for a company and receives a salary. Pearl Cohen has a highly dubious arrangement by which attorneys and patent attorneys that work for them are considered as not being employees and new employees are coerced into signing a statement to that effect.  Pearl Cohen’s professional employees are perhaps best considered as being free-lancers. Pearl Cohen does not pay the license fees of these professionals.

5. There are 19 patent attorneys that list their address in the Israel Patent Office database as working for Pearl Cohen in Herzliya. This is a mere 41% of the 46 patent attorneys that Pearl Cohen claims to employ. This list includes Assaf Weiler who is living in the UK according to Pearl Cohen’s website. It also includes Zeev Pearl who according to Pearl Cohen’s website is considered the managing partner working from the New York office. Pearl is licensed in Israel, but is not licensed as a patent attorney in the US.

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.

Of course, size isn’t everything. Pearl Cohen’s employment arrangement is not limited to that firm, and some competing firms have similar practices. I consider the model unethical, not least because it is both open to abuse by the ’employer’ and is frequently abused.

Dun and Bradstreet’s table has other problems. For example, Colb does not appear in the table listing the top 12 firms, and I am fairly sure that they are larger in terms of number of Israel Patent Attorneys than some of the firms that are listed.  Despite losing much of his litigation team recently, I think Dr Shlomo Cohen Law Office has enough Lawyers and patent attorneys working in IP to enter the table. There are, of course, also very large Israel law firms that have one or more patent attorney or IP lawyer working for them. Shibboleth and Shin Horowitz come to mind.

What is, of course, of more interest to clients is the competence and track record of the individual attorney who handles their files. Some of Israel’s best patent practitioners in private practice, including patent attorneys work for small firms or are sole practitioners.  This is true of both patent attorneys that draft and prosecute patents, and litigators that fight validity issues. It is also true of trademark attorneys, many of the better ones in Israel work for small firms.

The size of an IP firm can provide depth of knowledge and experience, but this is not necessarily the case. There are few economies of scale in this industry, and Parkinson’s Laws go a long way to explain why the same service from larger firms is more expensive, yet the sole practitioners and partners of smaller firms are usually better off financially than their colleagues in the larger practices.

The lists of IP firms put out by the professional magazines is also skewed towards the larger firms. The more attorneys that club together to form a single shop window, the more and larger clients they are likely to attract. The irony is that the when a successful attorney decides to grow his or her firm, the head attorney does more administration and less legal work, and is likely to take on less competent staff who are less of a threat. The more competent staff tend to break away and form their own firms. The upshot is that the average ability per attorney is generally lower in the bigger firms. A more objective statistic of a firm is the average billing per attorney, or something similar that normalizes absolute values by the number of practitioners.


DSM IP Assets Opposes IL 177724 to Refine Technologies – Striking Evidence from the Record

April 22, 2015
 Selling Culture?


Selling Culture?

Refine Technologies LLC are opposing Israel Patent Numbers 177724 and 205606 to DSM IP Assets. These applications, titled “Methods For Reducing The Degree Of Aggregation Of Aggregating Cells In A Cell Culture” are a national phase entry of PXCT/EP2005.002374 from 4 March 2005 and a divisional application thereof.

The two applications claim priority from EP 04075702.3 and EP 04075703.1 from 5 March 2004, and from EP 04077656.9 and EP 04077657.7 from 27 September 2005. The parent was allowed and published for opposition purposes on 31 January 2011 and on 27 April 2011 Refine technology LLC submitted an Opposition.
The Opposition proceeding was frozen until the divisional application was allowed and that was opposed on 29 November 2011. The two opposition proceedings were combined and the Statements of Opposition and responses were filed for the two cases together.
Both sides submitted expert opinions. In their answer to the Applicant’s response, Mr Jerry Shevitz submitted a second affidavit and the DSM IP Assets allege that this relates to art that wasn’t cited in the original statement of case and also raises new issues. The sections relating to the additional citations and new issues should be struck as an illegitimate widening of the grounds of opposition. Furthermore, they weren’t an answer to the response.
In an additional argument, DSM IP Assets alleged that Mr Jerry Shevitz relied on a decision of the South Korean court concerning a corresponding application and that this was hearsay and thus inadmissible.

Refine Technologies LLC countered that DSM IP Assets waited more than six months after Shevitz’ answer was filed and that it was thus too late to request that the references be struck from the record. They also allege that the claims were in the original statement of case and so rejected that they were illegitimately widening their opposition. They argued that the new citations weren’t new to DSM as they were cited in Korea and were only brought now, due to the response that DSM filed that ignored these references that they were familiar with. Consequently, the new citations were properly to be considered as being an answer to the Applicant’s response. As to the Korean case being a foreign court ruling, the opposer accepted that it wasn’t binding on the Israel Patent Office or in an way precedential, nevertheless it was a relevant ruling on the same issue by a respectable court and was thus admissible comparative law for the commissioner to consider.

DSM objected to the application as lacking novelty in light of US 6,544,424 from 2003, a patent now assigned to DSM. Whilst admitting that this patent did not relate to Refines ATF (alternative tangential flow) technology, they submitted that this was not relevant to the results obtained. DSM further argued that the combination of US 6,544,424 and other prior art renders the claims obvious. For good measure, they also argued that the claimed inventions were not enabled and the claims were inadequately supported.

In her Ruling, the Deputy Commissioner, Ms Jacqueline Bracha acknowledged that the submission to strike evidence could have been submitted earlier, but felt that the three months remaining to DSM before the hearing gives them adequate time to relate to the issue on its merits.

The material that Refine objected to may be categorized into three groups:

  1. Material that could have been referred to in the original opposition
  2. Material that unfairly widens the grounds for opposition
  3. Material that relates to foreign court rulings

Ms Bracha noted that Section 62 of the patent regulations only allows the opposer to file additional evidence to overcome something refuted by the applicant or in response to a new point raised by the applicant. Consequently sections 2, 19.2, 20, 24 and 41, and the related appendices which were considered as new material or widening were ordered struck from the record. As to foreign court rulings, Ms Bracha considered these relevant and helpful and that these could be submitted, whilst noting that she was in no way bound by them.

No costs were awarded.

Intermediate ruling Refines Opposition to DSM IP Assets Opposition to Israel Patent Applications 177724 and 205606, Ms Jacqueline Bracha, 16 March 2015

 


So Israel took his journey with all that he had, and came to Beersheba (Genesis 46)

April 14, 2015

park Carusso

Yesterday I enjoyed a pleasant trip down South to attend the WIPO Roving Seminar in Beer Sheva. The drive was pleasant. Negev is very verdant and the ornithology was good, with a lot of storks and black kites and the odd short-toed eagle in evidence. The event started at 9:30, and, with considerably less congestion getting into Beer Sheva than into Tel Aviv, I arrived at 9:15 am at the Carusso Science Park.

Moshe Lemberg, the Senior Program Officer at WIPO who organized the event introduced himself to me and hoped that I would blog about the refreshments. I thought this was a little surprising as the rogelach and burekas were fairly standard fayre but did make a welcome breakfast. Unfortunately however, the 3 litre hot water urn was inadequate to the task and I was unable to make myself a coffee. That had an adverse affect on my concentration during the first part of the program, and I noted that after Dr Daniel Ben Oliel presented the prize for Excelling Academic thesis in various fields of IP [sic] there were three or four competitors who presented brief talks on their papers for the Israel Patent Office Competition, but have no idea what they talked about. The chairs were too comfortable, I’d left home at 7 am and I was too far away from the screen. My neighbor kept nudging me. I suspect I was snoring a little. I went to the bathroom, washed my face and had a coffee (botz, using water from the now refilled urn), and went back in sitting closer to the front. This was a great improvement and I found the sessions interesting, stimulating and enjoyable.

Those wanting a review of the early sessions are respectfully referred to the IPKAT where the Doyen of IP Bloggers, Professor Jeremy Phillips has some insightful and relevant comments. See here.  For inciteful and irrelevant ones, read on!

Professor Phillips notes that there were 98 registrants. He was sitting in the back corner and was better situated to count heads than I was. I do try to keep tally on these events however, and did a head count on three occasions throughout the day. I noted 60 in the audience. With 5 rovers from WIPO and a large contingent from the patent office, this was less than impressive. I hope that the Haifa event on Tuesday is better attended, and as the program is largely the same, can highly recommend it.

PCT

PC Tea

PC Tea

Mr Matthew Bryan, the director of the PCT Legal Division gave a brief review of the PCT system and recent developments, and the amicable and helpful Dr Michael Bart who heads up the Israel Receiving Office spke about recent changes there. The local Beer Sheva (actually Omer – but who’se counting?) Mukhtar Patent Attorney, Dr Kfir Luzzatto joined Matthew and Michael, and gave some thoughts on the PCT, how Israel joining the system had affected the profession, and how he views International Search Reports from the Israel Patent Office.

Trademarks and Designs

Ms Debbie Roenning, Director of the Legal Division Madrid Register, Brands and Designs Section (BDS) spoke on Madrid system for trademark registration and then on the Hague system for Design Registration.  As well as showing which countries had signed up, she showed which countries were in the process of signing up which was useful. She also had some tips regarding tailoring goods for different jurisdictions, translating the list of goods into Hebrew, adding countries to an existing application and varying classes per country that were very informative.

Ms Anat Levi Sofer spoke briefly about trademarks and Madrid from the perspective of the Israel Patent Office and considered Israel joining Madrid a great success. Ms Ronit Bazik Sofer, head of trademarks at Reinhold Cohn represented the private sector and noted that she had been apprehensive of Israel joining Madrid and indeed, there had been a drop off in work since Israel joined, but with increased prosecution, things had evened out.

Knowing the official figures regarding trademarks filed directly into Israel and via Madrid, and Madrid marks originating in Israel, I think that both Ms Anat Levi Sofer and Ms Ronit Bazik Sofer were being less than objective. (Reinhold Cohn has too large a market segment for their practice not to follow the official statistics). Israel is very good at creating technology, but is less successful at launching international brands. Madrid has not been widely used by Israeli companies. It is possible that with additional prosecution resulting from more trademark applications designating Israel, workers in the trademark office and in private practice feel that they are busy. However, without the lucrative filing and with renewals handled centrally or by bucket shops, the revenues generated are lower that revenues once were. This is true of both patent office revenue and income to IP firms.

There was an opportunity to ask questions. In her first slide, Ms Roenning had shown various recent Israel trademarks filed by Israelis. The slide also included WIPO’s logo. It was tempting to ask why they had chosen what look’s like a roll of toilet paper, but I decided that it would unnecessarily cheapen the event.

Wipe-o

WIPE-O !

WIPO’s Arbitration and Mediation Center

Mr Matthew Bryan gave a presentation regarding WIPO’s arbitration and mediation services.  It was certainly worthwhile reminding those present that there are alternative methods of dispute resolution, and that going to court is not the only option.

Databases

Mr. Yoshiyuki Takagi spoke about WIPO’s databases such as WIPO Green and WIPO Re:Search. This brought some useful online tools to the attention of participants.

Lunch

ravioli

We were pleasantly surprised that WIPO / Patent Office had laid on a sumptuous buffet of ravioli, pizza, macaroni, cheese rolls, garlic bread, quiches, cheeses and salads. Had this been a couple of days after Shavuot (Pentacost) this may have seemed more of the same, but after a week of Pesach, noone passed over the opportunity to dine on hametz.

Copyright 

real life

Mr. Paolo Lanteri, the Legal Officer, Copyright Law Division, Culture and Creative Industries Sector, WIPO spoke about the gaming industry. It seems that I was far from the only participant who wasn’t a gamer. I put this down to a combination of the audience being middle aged nerds.

It was fascinating to learn that the gaming industry is more significant financially than feature films and music combined. Happily people still read.

It seems that protecting IP in games is a complicated issue. The talk was very informative.

Questions were solicited and I made a case for moving over to registration of copyright and shorter periods of protection since I consider the system as broken. Jeremy Phillips took issue with my position and argued that most people in practice can do most of what they want and that the system does give redress for abuses. We continued arguing in the car back to Jerusalem.

Closing session

men in suits

The WIPO representatives and the Commissioner got on stage together as a panel. It was reassuring with INTA coming up, to note that my charcoal suit is apparently in fashion for IP events.

Dr Luzzatto took the opportunity to ask about Arab countries boycotting Israel, giving the example of Jordan that, despite a peace agreement, in practice the legal profession there won’t represent Israelis.

Mr Matthew Bryan first dodged the question by noting that Jordan was not a signatory to the PCT. As Kfir would not let things go at that, he rather sensibly pointed out that WIPO strongly condemns Arab countries discriminating against Israel, and writes strongly worded letters noting that such countries are not living up to their international obligations. He did, however, point out WIPO does not have enforcement police and their influence is very limited.

The Commissioner noted that Israel could theoretically refuse to allow applications originating from countries that don’t accept Israeli trademark or patent applications, but that the Israel Patent Office decided not to adopt this policy.

Retired US patent attorney Bruce Lilling noted that Taiwan, an important industrial nation was kicked out of the PCT mechanism at China’s request.

Recommendation

For those who missed the Beer Sheva event yesterday, I recommend trying to attend the largely parallel but slightly shorter program in Haifa tomorrow. See here.

Gratuitous Political Rambling Digression (its my blog so I can do what I like)

I note that Ms Debbie Roenning (who also wore a trouser suit, but not a tie) is the head of the Brands and Designs Section which shares the unfortunate acronym of BDS, the ‘Boycott, Divestment and Sanctions’ Movement, the allegedly pro Palestinian, but actually notoriously hypocritical and anti-Semitic international movement.

On the way to the conference, I noted Sodastream’s new factory in Beer Sheva. They moved from the Industrial Area by Maale Adumim (a satellite town of Jerusalem on the road towards Jericho) in response to vicious propaganda abroad. In the Maale Adumim factory, Sodastream provided jobs to West Bank Arabs and was a model of co-existence. Forced to relocate, the primary sufferers are the West Bank Arabs.
WIPO is one of the least anti-Israel organs of the UN. I think it might have been very worthwhile for them to have invited Jordanian, Palestinian and Egyptian IP professionals, both government and private, to the event. I am on good terms with professional colleagues in all these jurisdictions, and with others in Lebanon, Saudi Arabia and elsewhere, who read this blog, and chat amicably with me at INTA, AIPPI and other international conferences. Peace is made by trade.

Of course, Israel is not the only country to have been boycotted. To advance U.S. foreign policy and national security objectives, the U.S. maintains laws and regulations that impose economic sanctions against certain countries, individuals, and entities (the “U.S. Sanctions Program”).  31 C.F.R. § 501 et seq.  The Office of Foreign Asset Control (“OFAC”) at the Department of the Treasury manages the U.S. Sanctions Program.  The U.S. Sanctions Program prohibits U.S. nationals and U.S. companies from doing business in embargoed or sanctioned countries and from doing business with individuals or entities subject to U.S. sanctions laws and regulations.  At various times, the US has forbidden their nationals to register trademarks in Cuba and has also failed to uphold Cuban trademarks. Whether or not human rights are more mistreated by Castro’s regime in Cuba or by the US in the Guantanamo Bay prison camp is not clear.


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