Kfir Luzzatto is Having Fun

February 2, 2016

Dr Kfir Luzzatto has published a new book. Judging by its title, “Fun With Patents”, after flirting with horror literature such as Mice and cures for male patent baldness he has gone back to his roots as a fourth generation patent attorney is writing about Patent Law again.

Actually, one may argue that his recent book titled “Regrow Your Hair with Your Mind”  was going back to his roots. Not just his hair follicles. For Dr Kfir is a descent of the Luzzatto dynasty of Rabbis, one of whom, Rabbi Moshe Chaim Luzzatto wrote a sort of early 13 steps guide to reaching higher levels of consciousness called the Straight Path, and though directed to attaining higher levels of spirituality such as prophecy rather than merely growing lots of hair (which many Israel Patent Attorneys, such as Sandford T Colb, myself, Sinai Yarus, Yaakov Schatz, etc. don’t seem to have a problem with, however, some of our illustrious colleagues, do seem to suffer), is nevertheless somewhat connected to that work of Kfir’s.

The book, in electronic format, is currently available here at reduced pre-sale price, so those of you looking for a romantic present to give to a patent attorney need look no further.

I can’t, as yet, comment on the contents of the book as I have not read it. It may overlap his previous works. Indeed, if I was to write a book called Fun with Patents, there would probably be a chapter on better mousetraps and another one on patent medicine for curing male baldness and other ailments.

Dr Luzzatto has promised to send me a hard copy once printed, so hopefully a book review will be forthcoming.


Circular 19/2012 Updated to Reflect On-line filing, but what about the Abstract?

January 28, 2016

abstract painting

Now that the Israel Patent Office is set up for and accepts on-line national phase entry of patent applications, Applicants can either file on paper or directly on line. The relevant Circular 19/2012 has been updated accordingly.

One can upload the Specification, Figures, Claims and genetic sequence if relevant using fields in the on-line interface.

COMMENT
My second attempt at filing on line went like a dream. I do, however, have one little problem: what about the Abstract?

In the old days, Applications in Israel did not have Abstracts and the Examiner, on allowing the application would write an abstract to accompany a representative image in the patent office journal where the allowance was published for opposition purposes.

More recently, the Applicant (or his representative) was requested to prepare an abstract, which was typically not a problem as the abstract from the PCT or priority document was used.

Now abstracts are sometimes like abstract works of art. One can read anything into them, and the author’s intention and the litigator’s understanding may both be equally legitimate which is one reason that statements made in the Abstract are rarely given much weight.

The problem I have is that the interface does not have a tab for uploading the Abstract and the updated Circular does not refer to this either.

One could submit the abstract as the last page of the description or appended to the claims. Not knowing what to do, I used the genetic sequence if relevant tab to upload a file labeled Abstract and assumed that someone in the patent office would realize that the attachment was not a genetic sequence but an abstract and deal with it accordingly. I thought that fairly quickly the Israel Patent Office would add a further field for uploading the Abstract as the PCT Easy software has one. Now I am not sure. Maybe the Examiner is going to write one as in the old days? Maybe with greater classification and full text searches the abstract has been deemed unnecessary? Does anyone know? Does anyone except me care?


M.N. 81 Canceled

January 27, 2016

division

We were not surprised that following the Genentech decision, The Commissioner circular M.N.  81 was canceled and later circulars that referred to it were amended.

This means that anyone (not just Genentech) can file a divisional from what is itself a divisional patent application in Israel.

We expected this to happen as one has to have common ground rules for all applicants.

There is, however, a downside to this. In cases that have a tendency to go litigious, such as with pharmaceuticals, there is an incentive on the applicant to keep a divisional application alive long after the parent application issues, so that the claims thereof can be amended following litigation on corresponding patents abroad, and judicial rulings concerning wording, claim structure and the like. This makes attacking such patents difficult as they become a moving target.

On grounds of ultra vires, I was unhappy with M.N. 81, but I do feel that on substantive grounds there is room to amend the law. I just feel that it requires the Knesset to do so. Possibly claims in the parent that were canceled due to plurality of invention objections should be allowed to be reintroduced, but I am not sure that allowing anything arguably based on the specification to be reintroduced at any time by keeping a divisional application alive is necessarily a good policy.

Note, there is a dirty word in Israeli legal circles for people with views like me. I am dismissed by the crusader crowd as being a ‘formalist’. I am aware of the arguments that we need judicial fiddling to protect democracy. However, I see them as Orwellian, and inherently dangerous.


Long Division

January 24, 2016

Herceptin

IL 234696 to Genentech relates to the antibody that is the active ingredient in its blockbuster drug Herceptin.

The Application is a divisional application of IL 214084 which is itself a
divisional application of 136201.

Section 24 of the Israel Patent 1967 states that: (a) As long as the application has not been accepted, the applicant is entitled to demand that it be divided into several applications.”  (b) If the application includes more than one invention, then the Registrar may, as long as he has not accepted the application, direct the applicant to divide his application.”

Back in February 2010, in Circular MN 81, then Israel Commissioner Dr Meir Noam creatively interpreted this statute to mean that although a first filing into Israel may be divided into divisional applications, those divisional applications could not be further divided once the parent application had published. This new interpretation was a departure to 40 years of established practice and did not seem compatible with the wording of the Law.

As we noted back then, the logic for the new interpretation of the statute was that Israel was getting ready to automatically publish applications 18 months from priority and not just make allowed patents open to inspection. Nevertheless, the new interpretation issued in an Israel Patent Office circular and overturned common practice dating back to when the statutes were legislated. Back then I commented that

With the proposed amendment allowing for 18 month publication, this measure is clearly required. Nevertheless, I am not convinced that this is interpretation of the law, but rather amendment thereof.Arguably this measure requires a formal amendment to the Law by the Knesset and goes beyond the authority of the Commissioner. It should be included in the proposed amendment for 18 month publication (second reading) and it would be fun if someone challenges this Circular on procedural grounds.

It was a different and also timely circular, not to require publication of printed journals, but to rely on on-line publication, and subsequent Knesset criticism of this as beyond the legal competence of the commissioner, that caused Dr Noam to retire.

The current commissioner Asa Kling seems to be more wary about changing substantive law by creative interpretation and prefers to rely on the Knesset and Ministry of Justice.

After IL 234696 to Genentech was filed, Genentech challenged the circular and in January 2015 an ex parte hearing before the Current Commissioner of Patents and Trademarks was held. Genentech noted that the Circular did not institute a new law or regulation but merely provided a new interpretation to an old law.  Genentech argued that the new interpretation in the Circular was based on an untenable reading of Section 24a and was thus ultra vires.  If this was indeed interpretation of the Statute, it should apply retroactively and invalidate a number of issued divisional-of-divisional applications. If, however, the Circular was to be considered as new law, it was ultra-vires and thus void. Notably, the former commissioner himself postponed application of the Circular which was odd if it is to be considered as interpretation. Without needing to force the issue of the validity or otherwise of the Circular, Genentech asked for at least an exception to be made for their case, i.e. that their divisional be considered as a legitimate application despite being a divisional of a divisional.  In a ruling that issued in January of this year, the present Commissioner noted that in the U.S., In re Ernest Johan Jens Henriksen, 55 C.C.P.A. 1384; 399 F.2d 253; 1968 CCPA LEXIS 273; 158 U.S.P.Q. (BNA) 224 the Court of Customs and Patent Appeals found somewhat similar guidelines of the USPTO unlawful. The EPO who also initially banned secondary divisional applications, has changed its practice and reinstated the possibility of filing secondary divisional applications. Filing secondary applications is also allowed in Australia and Japan.

In conclusion, the present Commissioner has allowed Genentech’s 234696 filing as being a legitimate divisional application despite being a divisional of a divisional.

COMMENT

There was some justification in Dr Noam’s attempt to prevent parties from leaving a divisional application pending to claim around competition in cases of generic competition not literally infringing. I think that preventing this type of activity does indeed require primary legislation. However, what the Commissioner has apparently not done is to rescind Circular M.N. 81. It remains unclear whether Genentech is an exception to the rule, and why this should be so, or whether Patent Office Circular M.N. 81 is now void.

Either way, as the validity of both parent application (IL 214084) and grandparent application (IL 136201) were challenged in Opposition proceedings, we suspect that if the case is allowed, the claims will likely be challenged in a further Opposition and the correct interpretation of Section 24 and whether divisional applications of divisional applications are allowable will be challenged directly. If such an opposer remains unhappy, he may take it up with the courts.  Although I was wary of the original Circular, I consider a situation under which the Commissioner has the discretion to allow or reject the filing of a divisional of a divisional on a case by case basis even more problematic.

 


Soulstar

January 20, 2016

S & P Casuals LTD filed Israel Trademark Application No. 262293 for “Soul Star”. The mark covers Clothing, footwear, headgear; designer clothing; clothing, namely, shirts, T-shirts, trousers, jeans, pants, shorts, tank tops, skirts, blouses, dresses, jackets, coats, sweaters, sweatshirts, jogging suits, rainwear, hats, caps, sun visors, belts, scarves, sleepwear, pyjamas, lingerie, underwear, boots, shoes, sneakers, sandals, booties, slipper socks and swimwear all in class 25 and is a national entry of an International trademark filing under the Madrid Protocol.

The mark published as allowed on 30 June 2015, and on 6 October 2015, Soul Cycle Inc.  opposed the mark. S & P Casuals LTD do not have local representation, but details of the opposition was sent to them by the International Office of WIPO. The period for responding has passed and the Applicants did not respond. They are therefore considered as having abandoned their mark and in view of the material in SoulCycle Inc.’s statement of case, costs of 3000 Shekels are awarded to them.


IPad Mini, IPad Air and MI Pad

January 20, 2016

Apple Inc filed Israel Trademark Application Number 261500 for IPAD MINI and Israel Trademark Application Number 261449 for IPAD AIR on 12 November and 20 November 2013. both in class 9 for Handheld mobile digital electronic device comprising a tablet computer, electronic book and periodical reader, digital audio and video player, camera, electronic personal organizer, personal digital assistant, electronic calendar, and mapping and global positioning system (GPS) device, and capable of providing access to the Internet and sending, receiving, and storing messages and other data.

Subsequently, on 14 May 2015, Xiaomi Singapore Pte. Ltd filed Israel Trademark Application Number 270078 for Mi Pad. The mark covers Portable and handheld electronic devices for transmitting, storing, manipulating, recording, and reviewing text, images, audio, video and data, including via global computer networks, wireless networks, and electronic communications networks; tablet computers, electronic book readers, periodical readers, digital audio and video players, digital camera, electronic personal organizers, personal digital assistants, electronic calendars, mapping and global positioning system (GPS) devices; computer peripheral devices; computer and portable and handheld electronic device accessories, namely, monitors, displays, keyboards, mouse, wires, cables, modems, disk drives, adapters, adapter cards, cable connectors, plug-in connectors, electrical power connectors, docking stations, charging stations, drivers, battery chargers, battery packs, memory cards and memory card readers, headphones and earphones, speakers, microphones, and headsets, cases, covers, and stands for portable and handheld electronic devices and computers; computer software for the development of content and service delivery across global computer networks, wireless networks, and electronic communications networks; downloadable audio works, visual works, audiovisual works and electronic publications featuring books, magazines, newspapers, periodicals, newsletters, journals and manuals on a variety of topics; computer software for transmitting, sharing, receiving, downloading, displaying, transferring, formatting, and converting content, text, visual works, audio works, audiovisual works, literary works, data, files, documents and electronic works via portable electronic devices and computers; computer game programs; downloadable music files; downloadable image files; video telephones; navigational instruments; screens [photoengraving] in class 9 and Telecommunication access services; communication by computer; transmission of data and of information by electronic means, broadcasting or transmission of radio and television programs; provision of telecommunications connections to computer databases and the Internet; electronic transmission of streamed and downloadable audio and video files via computer and other communications networks; web casting services; delivery of messages by electronic transmission; streaming of video content, streaming and subscription audio broadcasting of spoken word, music, concerts, and radio programs, broadcasting prerecorded videos featuring music and entertainment, television programs, motion pictures, news, sports, games, cultural events, and entertainment-related programs of all kinds, via computer and other communications networks; providing on-line bulletin boards for the transmission of messages among computer users concerning entertainment in the nature of music, concerts, videos, radio, television, film, news, sports, games and cultural events; communication services, namely, providing users access to communication networks for the transfer of music, video and audio recordings; teleconferencing services; providing Internet chatrooms; voice mail services; transmission of digital files.  in class 9.

Since Apple Inc.’s marks have not yet issued, a competing marks procedure was instituted and both parties are invited to a hearing before Ms Jacqueline Bracha on 1 February 2016 to states their cases.


Dynavisk

January 20, 2016

Fzio Med Inc.  filed Israel Trademark Application No. 258762 for “Dynavisk”.

After it published as allowed, Genzyme Corporation opposed the mark on 7 October 2015. The period for responding has passed and the Applicants did not respond. They are therefore considered as having abandoned their mark and in view of the material in Genzyme’s statement of case, costs of 2500 Shekels are awarded to them.


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