Submitting Corresponding European File Wrapper In Israel Patent Opposition Rejected on Procedural Grounds but Decision Overturned by Court

August 18, 2014

tangled web

DSM filed Israel Patent Application Number 142789 for high directional – fibers. The patent claimed priority from Dutch Patent NE 1010413 from 28 October 1998. The patent covers the fibers themselves and both ropes and anti-ballistic equipment fabricated from the fibers.

The Application issued under Section 17c, based on the corresponding United States Patent No. US 6,916,533 and published for opposition purposes in April 2006. DSM also has a couple of corresponding European patent applications. One was rejected and the other, EP 113828, was allowed but with narrower claims.

Mifalei PMS Migun (PMS Protection Factories) filed an opposition which was heard by Adjudicator of IP, Ms Yaara Shoshani Caspi. The opposition proceedings included a hearing on 28 and 29 June 2011, during which the Opposer requested to submit the file wrapper of the corresponding European case, but Ms Shoshani Caspi refused to allow this to be entered. On 17 October 2013, the Adjudicator upheld the patent and rejected the opposition. The Opposer has appealed this decision, particularly the intermediate decision not to allow the file wrapper of the European case to be submitted.

The Appeal

The Opposer filed a long-winded and detailed Appeal that claimed that in addition to factual errors and illogical conclusions regarding novelty and inventive step, the arbitrator also erred on legal principle. Specifically, the Arbitrator did not give sufficient weight to the fact that the Applicant had not made the European file wrapper of record, contrary to the duty of disclosure and the obligation of equitable behaviour. Specifically, the Applicant did not make the fact that one European patent was refused and one was significantly narrowed, concealed a graph and failed to provide an English translation of a Japanese patent cited as prior art, merely providing the Japanese original.  Accepting the case under Section 17c without considering the other family members and applying technical discretion was considered unacceptable, as it transferred the burden of proof to the opposer. Furthermore, the Opposer claimed that the standard of proof that the arbitrator demanded was beyond reasonable doubt rather than simply the burden of evidence generally required in civil procedure. The Opposer challenged the patent office for failing to examine the patent, and for simply relying on the US patent under Section 17c.

The Opposer claimed that when requesting allowance under Section 17c, the applicant should have proactively submitted all corresponding cases, and referred to District Court ruling on the issue.

The Patentee’s Response

The respondent (patentee) argued that the arbitrator had given a detailed and reasoned ruling based on factual and professional issues that the courts didn’t generally consider on Appeal. As to the graph, it was considered irrelevant to the adjudicator’s upholding of the Novelty and Inventiveness of the Application. The patentee rejected the claim that the duty of disclosure required submitting English language translations of all references, unless requested to. The Existence of corresponding European patent applications was alluded to in the file wrapper of the Israel application. Once allowed under Section 17c, there is no longer an ongoing duty of disclosure.

The patentee argued that the appeal was not one against the intermediate ruling concerning the European file wrapper. The appeal was only against the final decision from October 2013. The Patentee considered that the time to appeal intermediate rulings had long past. Furthermore, amending the statement of appeal was insufficient, since this was a separate appeal on the decision, not on intermediate rulings, and a request to amend the ruling was first raised in a hearing in April 2014.

The appellant countered that the original hearing had mentioned the intermediate ruling as grounds for appeal, both in the statement of appeal and in the Statement of Claims, and the intermediate decision was appended to the file. Case-law does not require the appeal to include the protocol. The request to amend the Statement of Appeal was not to introduce this as new material, but merely a safety precaution.

The Ruling

Under regulation 411  of the Civil Court Procedure, in addition to being able to appeal intermediate rulings after they are given, appellant may appeal intermediate as well as final rulings by right when appealing after the final ruling issues. Respondents (Patentee’s) claims that the appeal does not relate to intermediate rulings is not accurate. Point 76.2 of the Notice of Appeal notes that the adjudicator erred in failing to allow the European file wrapper to be entered into the Opposition. The fact that she did not give sufficient weight to the European patent office’s conclusions is mentioned earlier in Point 7.5. Reference is also made in Point 12 and Point 43. This was also fleshed out on 19 March 2014 in Chapter 3(6) of the main claims.

On examining the protocol, this intermediate ruling does not appear under the heading Decision or Ruling. It is scattered over 13 pages of protocol and is not detailed. It seems that the arbitrator was simply over-whelmed with the amount of material submitted. It is only in the final ruling that the decision not to allow the introduction of the European file wrapper is first discussed formally with legal support and so it is reasonable to appeal it when appealing the decision as a whole.

Filing the protocol regarding the intermediate ruling only on 28 Feb 2014, is somewhat unacceptable in that it contravenes Regulation 419(1) of the Civil Procedures. The appellant’s statement that they do not need to submit intermediate rulings and protocol is problematic and they should have submitted it. Nevertheless, since the protocol does not clearly state this as a Ruling or Decision, this flaw may be dealt with when awarding costs.

Citing the Regulations, the Judge noted that the court has the discretion to allow the Statement of Appeal to be amended at any time, awarding costs if necessary, so there was nothing inherently wrong with the appellant’s request to amend the Statement of Appeal. Indeed, contravening the procedural regulations does not disqualify a case in and of itself.

Judge Judith Schitzer was prepared to allow the protocol to be entered and the intermediate ruling to be appealed, despite procedural flaws, and went on to relate substantively to the issues raised by the European file wrapper.

The Arbitrator justified refusing to allow the European file wrapper to be considered on three grounds: the timing, failure to submit an affidavit and a suspicion that the respondent would not be able to cope with the new evidence.

In the ruling, Judge Schitzer  determined that the Adjudicator Ms Shoshana-Caspi should have considered the timing, the relevance of the material in reaching a true and just ruling, the damage to the parties if additional material is allowed to be considered, and whether the other party has the ability to relate to the new evidence.

As to the timing, the Opposer wished to introduce the additional material during the evidence stage and not after this stage was concluded. The Opposer requested to confront the expert witness of the Applicant with the European file wrappers. The Applicant countered this request by claiming that the new evidence should have been submitted at the evidence stage and not during cross-examination of the witness. If there was a delay here, it was a relatively minor delay, and is not comparable to submitting evidence after the evidence stage is closed, or during an Appeal. Citing Gabai vs. Aminach, Judge Schitzer noted that in patent appeals, the appellate court has wider jurisdiction than in other appeals and can hear new evidence if required to in order to get to the truth. How much more so (a fortiori) should the opposition proceeding by prepared to hear new evidence if it will help to clarify whether or not an invention is patentable.

Where one corresponding European patent is cancelled and one is severely narrowed, there is a prima facie basis to assume that the assumption of validity at the basis of a Section 17c allowance is suspect, and the Opposer should be able to have the evidence considered. Furthermore, the European file wrapper is not a surprising piece of evidence. The Applicant mentioned the corresponding European case, albeit laconically and possibly with insufficient detail, but nevertheless, should not be surprised by its inclusion; particularly as DSM was the applicant in Europe. In the circumstances, the European case should have been considered in attempting to do justice. The attempt by the Adjudicator to manage the case efficiently and smoothly is understandable but should not come at the cost of reaching a just conclusion, and the late stage at which the European file wrapper was submitted can be grounds for adjusting costs.

The Judge then cited from a pertinent Supreme Court ruling (1297/01 Michaelowich vs. Clal Insurance LTD) and noted that in patent cases there were a fortiori grounds to be even more lenient.

Furthermore, in the Statement of Case, the Opposer stated that they would refer to corresponding file wrappers, so the Applicant had plenty of time to prepare themselves.  The judge refrained from ruling whether or not the applicant should have been more open in acknowledging the European case. Suffice to say, that when it did come up, they should have related to the issues of novelty and patentability instead of fighting to prevent it being considered.

Judge Schitzer went on to note that the patent regulation 63 actually states that after the end of the evidence stage the parties cannot submit additional evidence without the permission of the Commissioner, implying that prior to the end of the evidence stage they can submit additional evidence, and even after this stage, the Commissioner has the discretion to allow such additional evidence to be submitted and should apply judicial consideration wisely instead of narrowly relying on procedural grounds. Further evidence to this wide discretion was found in Regulation 72.

As to the lack of an Affidavit, the Judge noted that if Ms Shoshana Caspi had felt the need for one, she could have asked for it, but not all evidence actually requires affidavits. Some evidence is self-evident and can be considered on its merits. Indeed, the Opposers raised this issue themselves, stating that the file wrapper speaks for itself.

Since, as ruled in 6837/12 Merck Sharp & Dohme Corp. it is preferable for the specialized courts to consider the issue of novelty and patentability, Judge Schitzer referred the case back to the Adjudicator to consider patentability of the claims in light of the European file wrapper.

In conclusion, Judge Schitzer stated that she was refraining from addressing the issue of novelty and inventiveness head on and also was leaving it to the arbitrator to decide whether or not an affidavit was warranted, and if so, to indicate to the parties what the affidavit should include.

Nevertheless, since the Opposer (the appellant) was responsible for the procedural irregularities, despite accepting the Appeal, she awarded costs of 15,000 Shekels against the appellant.

Civil Appeal 34029-01-14 Mifalei P.S.M Migun vs. DSM, Judge Judith Schitzer of Tel Aviv District Court, 12 August 2014.

COMMENTS

I suspect that the judge’s last remark regarding affidavits was tongue-in-cheek. Indeed I have been fighting the Israel Patent Office regarding the need to supply affidavits to support self-evident facts.

The Judge is correct in her analysis and there is a moral here, in that with patent issues it is neccessary to prefer substantive arguments rather than to have awkward material dismissed on procedural grounds.

Here

 

 

 


Israel Patent Number 94634, Extending and Shortening Patent Term Extensions

August 18, 2014

Rapamune Sirolimus

Under Section 64 of the Law, basic pharmaceutical patents may be extended for up to five years past the 20 years standard maximum term, in order that the drug developer is able to market the drug exclusively for a period of up to nine years. Since the Patent Term extension was first introduced, granting patent term extensions, but enabling generic competitors to try to synthesize but not stockpile the patented drug, the Law has been amended a couple of times. The first time was the seventh amendment, designed to allow Israel generics to compete with generic companies in other jurisdictions by reducing the term of patent term extension in Israel, to the shortest term allowed in another jurisdiction having patent term extensions (Bolar Countries). Under US pressure that the Israel Law was too generous to generic companies, the Law was amended again in the eleventh amendment in 2014.

Sir Roy Calne filed Israel Patent Number 94634 for COMPOSITIONS INHIBITING TRANSPLANT REJECTION IN MAMMALS USING RAPAMYCIN AND DERIVATIVES AND A CHEMOTHERAPEUTIC AGENT in June 1990, claiming priority from a case filed in June 1989. The patent issued in July 1996.

In June 2001, the applicants requested an patent term extension and in September 2002, a sole license was granted to Wyeth.

The drug was registered in January 2001 and an extension was granted in January 2004. The extension covers the drug RAPAMUNE and the active ingredient SIROLIMUS. The drug term extension was granted on the basis of the corresponding US patent no. US 5,100,899 whose product received marketing approval back in September 1999.

In the request for patent term extension, the applicant reserved the right to change the basic patent they were basing the application on, if a different patent of a Bolar country should lapse earlier.

the patent term extension issued on 25 January 2004 and the applicant was informed that it would publish in the January 2004 journal. No oppositions were filed against this extension. In the same letter, the Examiner requested that the applicant update regarding any patent term extension of the basic patent in the US, and any other patent extensions.

In November 2004, the applicant responded that the US patent application was still pending and that he required a time extension to respond to the Examiner. Furthermore, the applicant noted that it was examining the possibility of basing the patent term on the corresponding Australian patent.  After further correspondence, it transpired that the Australian patent term was extended until 5 June 2015 and the applicant therefore requested a full five-year extension in Israel based on the Australian patent.

After the 7th amendment of 2006, to the Patent Law, the applicants were required to detail all patent term extensions and to provide copies of the documentation regarding the license to sell the drugs and the patent term extensions. Neither the applicants or their representatives responded to this request.

In January 2013, the Association of Israeli Pharmacists filed a request to cancel the extension order, which was accompanied by an affidavit from Dr Ron Tomer (a director of Unipharm), who is a member of the committee of the chemical and pharmaceutical division of the Association of Israeli Pharmacists.

In June 2013, Wyeth responded to the cancellation request, submitting an affidavit of Dr Alvin David Joran, the legal adviser of Pfizer Inc. who had purchased Wyeth in 2013. The Association of Israeli Pharmacists filed a counter argument that included an Opinion by Elizabeth J Holland, an attorney at Kenyon and Kenyon, and also a further affidavit of Dr Ron Tomer. Pfizer decided not to cross-examine  Elizabeth J Holland on her affidavit but both Dr Alvin David Joran and Dr Ron Tomer were cross-examined in a hearing on 27 May 2013.

The Association of Israeli Pharmacists maintain that under the 7th Amendment, the longest available extension should be no more than 7 July 2013. Furthermore, this was the longest period available before the 7th Amendment, i.e. based on US 5,100,899. Furthermore, there is a specific and explicit requirement for equitable behaviour in Section 64B(i) and the applicants failure to respond tot he requirement to detail all patent term extensions and to provide copies of the documentation regarding the license to sell the drugs and the patent term extensions was itself grounds to deny any further extension.

The patentee argued that the interim arrangement of the 7th amendment damaged their property rights and was thus illegal. The patent term extension was legally obtained and the patentee followed their legal advisors. Their whole business plan was based on the patent term extension that was granted.

The Ruling

The interim period is covered by Section 22 of the 7th amendment:

“(a) The rulings of the Law, including Section 164a and Section 18 apply to pending requests for extension periods that were applied for before this law comes into effect, providing that the basic patent has not yet lapsed.

(b) Despite that written in part(a) above, the period of patent term extensions that issued prior to this amendment entering into effect, will not suffer due to them not fulfilling the constraints of parts (5) and (6) of Section 64(d) of the main Law, as it appears in part 3 of this law.

On the face of it, the interim period applies to the present case, where the patent term extension was granted on 5 June 2005, and the patent would have lapsed on 6 june 2010, which is after the amendment entered into force in January 2006. That said, the patentees claim that this is illegal in that there property rights are retroactively cancelled.

The Commissioner noted that this was not the first time that the validity of the various amendments to the patent term extension of the Patent Law has been challenged. See for example 70390 Wyeth vs. Dexcel LTD (ruling by then Deputy Commissioner Axelrod), 83148 Roche Diagnostics GmbH (ruling by then Commissioner, Dr Meir Noam). In those rulings the interim arrangement and its legality in the face of Section 8 of the 1980 Basic Law “Human Honour and Freedom”.  In those cases, it was ruled that the interim arrangement was legal and did not contravene the property rights enshrined in the Basic Law.

Without entering the basic issue of retrospective legislation, it is clear that the interim arrangement includes balances. In Wyeth, Axelrod summarizes “in all cases where there is a point in time that legislation comes into effect, there will always be parties that find themselves on the right and wrong sides of this time period.”

Similarly in Roche, Dr Noam ruled that the entire edifice of Intellectual Property is built on balances between competing interests, and the legislators are allowed to periodically change the point of balance. This is still the case if the balance is to address the disadvantage of the Israel generic drug industry. Furthermore, he went on to rule that interim periods are sometimes to address discrimination against one party or another, and sometimes simply to enable a smooth transition from one regime to another. Although the interim period has to be constitutional, judges should minimize their interference with legislation. (3734/11 Dodian et al.. vs State of Israel).

The current Commissioner, Asa Kling could not see justification in deviating from his predecessors regarding their positions concerning the interim period. He also noted that this wasn’t an issue of the interim period at all, but of the whole amendment, which moved the point of balance in favour of the generic industries.  Since the court had accepted the legality of the amendment in Lundbeck I and Lundbeck II, Novartis and Neurim he considered the issue moot. It is for the legislative body to determine the correct balance between competing interests, and he should be very careful before encroaching on that power. Particularly concerning the economy, one should be particularly circumspect. It is not for the courts to determine economic policy, determine economci preferences or to change internal balances. see 4769/95 Menachem vs. Ministry of Transport and 3145/99 Bank of Israel vs. Hazan.

The Commissioner noted that the amendment was not being challenged, implicitly accepting that the balance struck was fair. Rather, the issue was only that of changing the period. Anyway, the Supreme Court has noted that adversely affecting predicted sales was not to be considered as detrimentally affecting property rights, and Joran’s affidavit was insufficient to base a counter-claim.

The Commissioner also noted that the amendment itself was amended again in Amendment 11 of 2014, although this does not materially affect the issue.

Section 64(9)a states that the Extension period will remain in force, subject to Section 64(10), for a period comparable to the minimum period of any extension granted to the basic patent in a country having patent term extensions. Section 64(10) states that despite Section 64(9), (3) the patent term extension will lapse no later than the period under which the first patent term extension lapses in on a recognized country.

There is no argument that the US patent was extended for 1492 days and lapsed on 7 July 2013. This was the first patent to lapse and is the shortest period of any extension allowed.

Both Holland and Joran claimed that there was also an additional six months pediatric exclusivity period in the US . The Commissioner rejected this claim noting that Section 64(10)3 relates to the patent term extension and does not relate to other exclusive rights. This interpretation is in accordance with the ruling concerning Kirin-Amgen, Inc. 110669.

As the request for cancelling the further extension was accepted, the claims concerning the equitable behaviour of the patentee were considered moot.

In light of the above, Commissioner Asa Kling ruled that the patent in question will lapse in July 2013 and notice of this will issue in the July 2014 journal.

Israel Patent Number 94634, The Association of Israeli Pharmacists vs. Sir Roy Calne  and Wyeth, Ruling Asa Kling 13, July 2014.

 

 

 

 


Why Are There so Few Women Inventors?

August 17, 2014

Mothers of Invention

In previous blog postings, I’ve mentioned Dr Shlomit Yanisky-Ravid’s book “Intellectual Property at the Workplace: Theoretical and Comparative Perspectives”. However, I have not published a review on this blog yet, since I have had a peer-reviewed review accepted by the Oxford Journal of Intellectual Property Law and Practice. Once this publishes, I will link to it and make some additional comments.

There is, however, one chapter in the book that deals with women inventors, or rather the lack of them. the chapter is weakly connected to the rest of the book since the author suggests that the fact that most inventions are filed by companies exasperates the problem. However, the empirical evidence that she brings actually indicates that there are almost twice as many named women inventors of company inventions than there are of privately filed inventions. In other words, the evidence goes against the hypothesis. The chapter on women inventors is structurally different from the rest of the book in that it includes graphs and statistics. As it is really a different subject from the book as a whole, I am blogging some comments now.

The book as a whole, and the chapter on women inventors, like so many other pieces of scholarship, reflects the author’s personality and values. Dr Yanisky-Ravid is a passionate advocate of worker’s rights and also of women’s rights. The extensive footnotes use the plural of the verb to see ראו, since the singular form ראה is masculine, and we can’t have that can we? She uses the double-barreled name favoured by women lawyers, where her family named is added to that of the husbands or her man as she calls him, using the term אישי – Ishi or ‘my man’ in the dedication, rather than the historically correct term בעלי – ba’ali which means ‘my husband’, but has connotations of ownership since it is linked to the word בעלים (ba’alim) meaning owners, and בעלות (ba’alut) meaning ownership. In this, the author is actually preempted by Hosea.

The author posits that, as with other types of property law, inherent biases cause an inequitable division of resources that further entrenches inequalities. She notes that over the five-year period from 2000 to 2005, only 1.9% of patentees receiving Israel patents were women, 30% were men and the rest were companies. With regard to employee inventions, 13% of named inventors were women and 87% were men. This is understood as showing that women more often invent as part of teams, but are rarely at the narrow apex of the pyramid. The author cheerfully notes that her analysis does not directly prove the source of the discrimination. Nevertheless, a feminist approach to IP rights is presented, the book purporting to address the legal and other structures that exclude women from owning IP rights.

The author considers that property rights per se have been under-analyzed from a gender perspective and that the traditional patriarchal society has defined property in a way that favours men. The situation in IP in general and patents in particular is seen as an extreme example of this built-in discrimination. Citing McKinnon, Gilligan and Fisk, the author reaches the radical conclusion that the fact that women are not often named as inventors is proof that the legal system, the definition of patentable subject matter and the concept of ownership inherent in the concept of intellectual property as property all discriminate against women. The biases in patent law that result in this discrimination are not apparent, but they would not be expected to be discernible since they are so deeply entrenched. Bias is not, however, purely a masculine aspect of IP law. Other sectors of society are under-represented amongst inventors and owners of intellectual property and these similarly show that the system is biased. Affirmative action is proposed. Specifically, there should be a minimum quota of female examiners in the Israel Patent Office and in government entities. Forcing commercial companies to employ women in R&D is also suggested, but not stressed. She toys with the idea of widening the definition of inventor to include research assistants, lab workers and junior staff.

In the years studied by the author, there were, according to her research, actually more female examiners than males. This makes the minimal quota idea a little odd. there is also no explanation on how a minimal number of women examiners would increase the number of women inventors. The hypothesis is based on the assumption that there is some bias by examiners. Personally, I don’t think that examiners of either sex pay much attention to the gender of the inventor. This is something that could be tested though. It is certainly possible to compare the relative proportion of patents examined and patents allowed where the inventor is male or female and the examiner is male or female. Dr Yanisky-Ravid doesn’t bother. She simply makes wild, unsubstantiated hypotheses and suggests ways to improve the situation. As an empiricist, I find the approach disturbing.

In the English overview we find a paragraph opening with the sentence: An important principle that arises from the consideration of the different theories focuses on the stage during which an employee transfers rights to her employer.

Why, where according to her own statistics, very few inventors are women, does she relate to her employer?

Dr Yanisky Ravid’s position is that the evidence that women are not often named inventors of patents proves that the patent system discriminates against women. I don’t see a gender bias in the Israel Patent Law 1967, as a document and to be fair, neither does Dr Yanisky-Ravid. She deduces the subtle and insidious bias from the fact that women are not inventors and the net result of men inventing does not fairly redistribute wealth between the sexes. It is, however, certainly true that women are certainly under-represented as inventors. In 15 years of very broad practice, drafting thousands of patent applications, I’ve met five women inventors, and three of those were in clothing related fields (including the inventor of seamless knickers, which is a patent I wrote for Delta and had allowed without office actions. Arguably it is one of  the better inventions I’ve worked on). Can the lack of women inventors be fairly attributed to discrimination? I am not convinced.

I have no doubt that in the past women have been discriminated against in some respects, and this discrimination included the moral right seen as part of copyright in the continental system. However, as far as copyright is concerned, the world has come a long way since Mary Ann Evans adopted the name George Elliot and Anne Brontë wrote under the pseudonym Acton Bell. A strong case can be made that Rosalind Franklin, Lise Meitner and particularly Jocelyn Bell Burnell should have received Nobel Prizes together with or instead of their male associates.

There are some market forces that discriminate against women but I am less certain than Dr Shlomit Yanisky-Ravid that the paucity of women named as inventors on patents is mostly the result of their contributions being unnoticed, of fewer women studying science, or of women being less likely to be able to burn the midnight oil and more likely to accept 9:00 to 5:00 jobs, and to seek part-time work to bring up children and to cook and clean for their significant others.

I think my aunt who was brought up in an egalitarian and very left-wing secular Kibbutz was closer to the truth when she once told me that she thinks that, left to women, we’d still be living in caves — albeit, nicely furnished ones with well swept floors. Men are, by nature, conquerors who are programmed to improve their lot, and women are naturally home-makers who are programmed to make the best of what they have. This programming is, I believe, nature, not nurture.

I don’t accept that the IP field discriminates merely because there are fewer women inventors than men. This is not an argument that my scientific and legal training, or my British and Jewish education, considers intellectually robust. This apparently won’t bother Yanisky-Ravid since she no doubt considers these as symptomatic of the pro-masculine bias of my education. I am missing her point. We are on different wavelengths.

I am reminded of the scene in Life of Brian where the members of “The People’s Front of Judea” are sitting in the amphitheatre.

Stan: I want to have babies.

Reg: You want to have babies?!?!

Stan: It’s every man’s right to have babies if he wants them.

Reg: But … you can’t HAVE babies!

Stan: Don’t you oppress me!

Reg: I’m not oppressing you, Stan. You haven’t got a womb! Where’s the foetus gonna gestate? You gonna keep it in a box?

At an event in Bar Ilan University a few years back, Dr Yanitzky-Ravid suggested that the patent field should be widened to non-technical inventions to be fairer to women who were generally less technical. In her latest book, that particularly idea is not discussed. It seems that she has thouht better of it.

I started my comments by noting that the author is unhappy with using the word בעל (Baal, as in the male Canaanite god, baal z’vuv literally Lord of the Flies or Belzebub) for her significant other of the male gender since the term implies ownership – think of connection between husband and husbandry. I realize now that I’ve misunderstood: what Yanisky-Ravid objects to is the use of the term baalut – בעלות meaning ownership, since it implies masculinity.


Can an Affidavit of an Opposer be Relied Upon in a Section 34 Ex Partes Decision?

August 17, 2014

ex parte

Israel Patent Application 156034 is joint owned by Serguei Borisovish Sivolenko and by DIAMCAD N.V.

After an opposition was withdrawn, Deputy Commissioner Ms Jacqueline Bracha used her discretion power under Section 34 of the Law to continue the opposition as an ex-partes proceeding.

The Applicants responded that since the opposition was withdrawn, Ms Bracha could not rely on Mr Akiva Caspi’s affidavit as submitted by the Opposer, since he was not cross-examined on it.

Ms Bracha accepted the criticism and consequently has invited the applicants to appear before her on 10 September 2014 to state their case at an Oral hearing Under Section 74c of the Patent Regulations 1968. She has given them the option of either bringing along Mr Caspi at their expense, as a witness to be cross-examined by Ms Bracha, or they can submit a further affidavit or statement and a hearing will be arranged a week later.


Inventor Compensation Request Frozen Pending Bagatz Decision in Barzani vs. Iscar

August 17, 2014

anonymous

The Committee for ruling on employee compensation for a service invention has agreed to freeze the proceedings pending whether or not the Supreme Court decides to hear Barzani’s appeal.

The identities of the parties of the case in question are censored, and the decision is published as Ploni (i.e. the Israel equivalent of John Doe or A. N. Other) against the Company (in process of disbanding), so it appears that the employer company is in the process of being dismantled. We therefore suspect that the inventor is unlikely to receive much in the way of compensation.


Camtek Gets A Knockout Against Orbotech

August 14, 2014

CamtekOrbotech

Camtek and Orbotech are both Israel based manufacturers of imaging systems for the semiconductor industry.

After requesting modified examination under Section 17c of the Law, Orbotech received a notice of allowance for Israel Patent Number 179995 titled “Systems and Method for Inspecting Patterned Devices Having Microscopic Conductors” which published for opposition purposes back on 31 October 2010.

On 31 January 2011 Camtek filed an opposition.

Camtek claimed that the system and method use image analysis based on Darkfield and Brightfield illumination, using standard elements, and thus the claimed invention lacked novelty and inventive step over the prior art including US 6,947,151, IL 81450,  US 5,969,372,  WO 99/10730, HandBook for Machine Vision, 2006 and Optical Consideration for Machine Vision, 1985.

Furthermore, Camtek claimed that Orbotech had failed to make earlier Orbotech patent no. IL 81450 of record in this case, contravening the duty of disclosure under Section 18 of the Israel Patent Law and showing inequitable behaviour.

The Applicant countered that the invention did not relate to a new principle or to a new component but rather to a new system, in that the arrangement of components provided the invention.

Inter Partes Opposition to 179995 titled “Systems and Method for Inspecting Patterned Devices Having Microscopic Conductors”

As to the Duty of Disclosure, Orbotech went on to argue that the cited art was insufficient to invalidate the invention as claimed.

Experts representing both parties submitted affidavits and the applicant managed to have some clauses cancelled as illegimate widening of the grounds of opposition. The experts were cross-examined.

Ruling

The application includes 30 claims, of which claims 1, 11 and 22 are independent.

The system, as claimed in claim 1 is directed to:

An inspection system operative to inspect patterned devices having microscopic conductors, the system comprising:
at least first and second light sources, which illuminate a patterned substrate, said patterned substrate defining a substrate plane, wherein said first and second light sources define first and second paths of illumination, respectively; wherein said first and second paths of light are mutually non-parallel in a plane parallel to said substrate plane;
a camera viewing a location of a candidate defect on said patterned substrate, and acquiring thereat at least one image of the location, said at least one image being illuminated by illumination from at least said first and second light sources; wherein said camera defines an optical axis and said first and second paths of illumination are offset from said optical axis;
and wherein a response to illumination supplied along said first path of illumination is differentiable from a response to illumination supplied along said second path of illumination; and a defect classifier operative to receive said at least one image and to distinguish therewithin a candidate defect caused by a particle foreign to said patterned substrate from other types of candidate defects.

Claim 11 is directed to a corresponding method and claim 22 to the system of claim 1 being able to differentiate between cuts and other defects.

The opposition proceedings focused on the meaning of the term used to describe the first and second paths of light, described as being “mutually non-parallel in a plane parallel to said substrate plane“. The Applicant claimed that this relates to the Azimuth angle, and the Opposer noted that the term Azimuth Angle is not mentioned anywhere in the claims and is first introduced in the affidavit of Orbotech’s expert witness.

In the ruling, Deputy Commissioner Jacqueline Bracha cited 345/87 Hughes Aircraft Company vs. State of Israel to explain how claim construction should be achieved in Israel. Essentially, claims, are to be interpreted like any other clause in any other document. The specification as a whole is to be used to explain the claims, while noting that the claims are intended to be understood by persons of the art, and with a little leeway to account for the Applicant’s intention, falling back on dictionaries whilst acknowledging that the Applicant may be his own lexographer.

Based on the above, the Deputy Commissioner went on to rule that ideally, claims should be self-explanatory and understandable to persons of the art without reference to the specification. Even where a full understanding is based on other parts of the specification, the claims should be sufficiently clear and concise, and this is the purpose of Section 13 of the Law and clause 20(a) 3 of the regulations.

Ms Bracha went on to claim that this approach reflects the Supreme Court ruling 2626/11 Hasin Esh Taaiyot (lit. Fireproof Industries) vs. Koniel Antonio (Nevo 11/4/13).

“secondly, where a legal disagreement relates to a monopol or its boundaries, the specification will serve as a support for explaining the claims.” …. “from this, it transpires that the specification cannot protect details that are not mentioned in the claims. In other words, the monopoly went extend beyond the scope of the claim-set. This principle protects the public interest in that it provides clarity to that protected by a patent and allows the public to do research and development on those elements [described but] not protected.

Ms Bracha went on to suggest that as with Contract Law, any ambiguities should act against the Patentee since the Patentee is responsible for them.

Quoting from recent US decision, Nautilus Inc. v. Biosig Instruments, Inc. 572 US (2014):

“At the same time, a patent must be precise enough to afford clear notice of what is claimed, thereby “‘appris[ing] the public of what is still open to them.'”…patent system fosters “an incentive to be as vague and ambiguous as you can with your claims” and “defer clarity at all costs”). Eliminating that temptation is in order, and “the patent drafter is in the best position to resolve that ambiguity in … patent claims”.”

The ruling now gets very technical regarding what light sources can be considered parallel and where Darkfield fits into the picture, at different azimuth’s and refers to Figures attached  to Golan’s affidavit that, unfortunately, are not reproduced.

The Applicant, does, however, refer to the specification as well.

As to Novelty, the Deputy Commissioner cited Section 4 of the Law and Hughes Aircraft section 45. For comparative purposes, she cited a UK ruling:

“In order to anticipate a patent, the prior art must disclose the claimed invention and (together with common general knowledge) enable the ordinary skilled person to perform it.”

(H. Lundbeck A/S v. Generics (UK) Ltd. & Ors [2008] R.P.C. 19, par. 9).

the Opposer noted that a Supervision system was available from Amitech prior to the priority date and that this is a prior art publication in Israel (in the US and some other places, there is a grace period).

The functionality of this earlier system was examined and was compared to the claimed invention. The cited art was then examined in turn.

The Deputy Commissioner ruled that claim 1 was anticipated by IL 81450, specifically by claims 11-13 thereof, and thus lacked novelty.

Claim 2 merely adds a camera. to photograph defects.

Claim 3 adds a classifier of defects but the nature of this is not explained and the term classifier per se is too broad to be inventive.

Claim 4 merely slightly improves the functionality of the classifier and is not inventive over claim 3.

Similarly Claim 5, which is able to identify dust particles, merely slightly improves the functionality of the classifier and is not inventive over claim 3.

Claim 6 introduces using two sources of monochromatic light having different wavelengths. This is considered obvious my be combination of IL 81450 and WO 99/10730.

Claim 7 indicates that the two light sources do not act together and is not considered inventive over claim 1.

Claim 8 relates to perpendicular light sources which is preempted by IL 81450.

Claim 9 was not specifically challenged by the Opposer and appears to have been supported by Fig 4D and by pages 11 and 12 of the specification. Probably because the Opposer didn’t challenge this, the Applicant’s expert witness did not relate to this claims. Somewhat oddly in my opinion, the deputy Commissioner felt that the onus was on the applicant to prove novelty and he had failed to do so, so this claim was struck as well.

Claim 10 simply applies claim 1 to an array of electronic components and neither describes the equipment or the method, so was considered anticipated and not based on the specification and thus rejected under sections 4 and 13. Here again, I am at a loss to understand the relevance of section 13.

Claim 11 relates to a method of using the system of claim 1 and the reasoning used against claim 1 is relevant here as well. Claim 12 relates to claim 11 using Darkfield, claim 12 to claim 11 using an AOI system and since the system described is an AOI system, this adds nothing.   Claims 14 to 21 are method equivalents of claims 3-10 and claims 22-25 claim the system of claim 1 where the defects detected change and this does not render the equipment or the method new. Claims 26-30 relate to the substrate being examined and this also does not render the equipment or the method new.

Equitable Behavior

The background of the application relates to the supervisor and to the US 6,947,151 patent, so failure to mention these in an information disclosure statement was not deemed critical. However, IL 81450 is owned by Amitech and thus known to them, yet was not mentioned. Apparently the Opposer did not claim inequitable behavior (to me it seems odd that Adv. Levit would miss this).

Mentioning the Supervisor in the background is somewhat of a problem since the Examiner cannot easily determine what this includes. The Deputy Commissioner hypothesizes that submission of a product manual might have been in order under section 20(a)1, but the Examiner did not ask for this and she does not see that the law provides for sanctions against the applicant. The sanction for inequitable behavior is defined in Section 18c and relates to the duty of disclosure of documents and here, the Applicant fulfilled his obligations. Citing 14/92 Plasson Maagan Michael vs. Ferdy Freint, the Deputy Commissioner noted that the duty of disclosure is ongoing up until allowance and that failure can result in more than compensation [i.e. that an issued patent may be deem unenforceable or voided]. Mentioning equipment in the background is insufficient. The background should have included a description of the functionality.

That said, the claims are all struck down as lacking novelty or inventive step and the efficiency of the proceedings may be considered in terms of the amount of work required by opposer to obtain and describe this evidence when costs are awarded.

The opposition was accepted and the patent application was cancelled.

Israel Patent Number 179995 titled “Systems and Method for Inspecting Patterned Devices Having Microscopic Conductors” to Orbotech, Opposed by Camtek, ruling by Deputy Commissioner Jacqueline Bracha, 20 July 2014

Comments

I don’t remember the quote from Hasin Eish, but I think the Supreme Court ruling is not as clear as it could be. One can do research and development on patented elements protected by claims, and one can manufacture and sell non-claimed elements that are described.

Claim 1 cannot fairly be read as relating to perpendicular azimuths. This could be a flaw in the drafting, but also may indicate that the applicant was unaware of what they wanted an invention on at the time of filing. The Israel Law used to enable suing for infringement of ‘the pith and marrow’ of the invention as described, and if it is clear from specification that something not clearly claimed was intended, the claim construction for enforcement purposes may work slightly differently. At the opposition stage, claim 1 does appear too wide and it might, perhaps, have benefited from narrowing and clarifying amendments.  I am a little unhappy at claim 9 being invalidated because of the failure of applicant to show patentability. I think that in both examination and opposition, there is a presumption of novelty and inventiveness to the extent that, although not yet enforceable against third parties, during examination and opposition proceedings, the onus is on the Examiner and then the Opposer, to challenge the validity by bringing relevant prior art and logical arguments.

Nevertheless, the decision seems to be generally thorough and well reasoned.


Israel Trademark Arbitrator Cheesed Off with Cancellation Proceedings

August 13, 2014

pizza

Israel Trademark no. IL TM 236375 “פיצרלה” (Pizarella) to Yitzchak Hazot covers Cheese and dairy products; all included in class 29, Pizzas and pizza’s dough; included in class 30, and Restaurants and pizza restaurants; included in class 43.

The mark, issued on 11 June 2011, and Messers Yoel Lavi and Assaf Revach filed a cancellation proceedings on 18 October 2013 through Naomi Assia Law Offices.  On 19 March 2014, withn the framework of the opposition proceedings, the complainants should have filed evidence but failed to do so. On 25 May 2014, the Trademark Office sent a notice that failure to comply would result in the case being closed within 7 days.

On 5 June 2014, the complainants requested an extension to allow further negotiations between the parties, and on 8 June 2014, the Court of the Patent and Trademark Office gave an extension but requested an update from the parties by 22 June 2014. This was not received.  Ruling that the complainant was apparently handling the issue themselves, the arbitrator of the case, Ms Yaara Shoshani Caspi, closed the file and the mark remains valid.

 


Intellectual Property at the Workplace: Theoretical and Comparative Perspectives, by Dr Shlomit Yanisky-Ravid, the Book Launch

July 4, 2014

shlomit

This is a report of the  book launch of Dr Shlomit Yanisky-Ravid’s opus “Intellectual Property at the Workplace: Theoretical and Comparative Perspectives, by Dr Shlomit Yanitzky-Ravid”. קניין רוחני בעסודה: תיאוריה, מעשה ומשפט השווה – ד”ר שולמית יניצקי-רביד. I have a peer-reviewed book review waiting publication, and can only blog that once it has publishes, at least on-line, so this article focuses on the event, not the book.

THE LUNCH LAUNCH

Dr Miriam Biton once accused me of only blogging about refreshments at conferences. This is not true. I try to cover events for IP enthusiasts who forgot to attend, and do try to cover the less substantive aspects of events as well. Nevertheless, I had worked through lunch and the reception started at 4:30, so I was grateful that it included savoury sandwiches. They weren’t very exciting or tasty, but were filling, and I didn’t get home until gone 10 PM, so it was appreciated. Most were short on filling, but one with avocado wasn’t, and I had changed into a white shirt for the occasion. Ah well.

There were perhaps 30 people at the reception, and about 100 at the event. This number included students. In an email exchange with me Dr Shlomit Yanisky-Ravid claimed 80 registered participants, so perhaps we should accept this figure without quibbling.

WORDS OF WELCOME

The evening opened with words of welcome from the Dean of the Law faculty, Professor Amichai Cohen, who noted how active Dr Shlomit Yanisky-Ravid is very busy in a wide range of activities including organizing events, student trips abroad, lecturing, publishing, directing the Center for Comparative Law and other work for the ONO Academic College.

For some reason, the compere, Dr Rivi Cohen, who otherwise did a fine job, introduced the Commissioner of Patents and Trademarks, as Adv. Assa Kling. I suppose a law academic considers that being an attorney-at-law is a major achievement, but there are 50,000 of them in Israel, and only one Commissioner of Patents at a time. The job description of Commissioner of Patents is approximately on a par with being a District Court Judge. As the commissioner had recently published a ruling relating to Service Inventions that had related extensively to the book, but ruled that even the author admitted that the current state of the Law was not in accordance with her views, I was eager to hear what he had to say. Diplomatically, he spoke about the collaboration between the Patent Office and WIPO that Shlomit was involved with, and didn’t relate much to the book other than noting that it was in the Patent Office library. He also noted that there was an unprecedented 8 cases before the committee for employee compensation, so the book was timely and important.

Judge Elisheva Barak Ussoskin, the Emeritus Labour Court Deputy President, read a speech that fairly summed up the book. She then apologized for not staying, but her grandchildren had ballet, which she felt was more important. For a words of praise presentation, this was pardonable, but subsequent speakers in the first panel, made up of academics and colleagues of Shlomit from ONO, also spoke and then walked out.

THE ACADEMIC PANEL

Former Accountant General, Professor Yaron Zlikha, raised some interested points concerning non-patentable inventions by civil servants, and argued that giving a large percentage royalty to civil servants who were inventors of patents discriminated against their colleagues who may have made lucrative innovations for the government that are not patentable. He gave, as an example, an action he had initiated that had generated two billion shekels for the communal pot, arguing that giving inventors 35% royalties and not giving him even 3.5 parts per million, seemed a little unfair. Professor Shlomo Noy, Head of the Health Services Department at ONO then spoke.  He countered some of Dr Zlikha’s comments. Both senior ONO lecturers spoke and walked out. Not taking questions from the floor is one thing, but not staying for the break to take questions individually, or to hear other panelists comments, seemed to me to be bad manners. If the moderator had forced them to react to each other’s comments, a meaningful debate might have ensued.  (I felt that the moderator, who mentioned Shlomit’s important chapter on gender, was mostly qualified by virtue of being a female academic). 

Professor Orly Lovel gave a perspective based on corporate law. She had a lot to say and limited time, so gabbled somewhat. Her last point was valid, though hardly original. She noted that the labour Laws in California which allowed workers to change companies and take knowledge with them had generated Silicon Valley, whereas the Massachusetts State Law had prevented a similar phenomenon from growing up around Boston, despite the top universities there. I Accept that this is good evidence that pro-worker legislation is good for the technological progress. However,  I am not sure that it is good for companies or inventors. In other words, the question of how this redistributes wealth was not addressed.

THE PROFESSIONAL PANEL

After the break, there was a panel chaired by Advocate and Notary Calia Klein, the head of the labour law group at Pearl Cohen. Having experienced first hand of how her firm treats employees, it was interesting to discover that they have an Employment Law group, and are thus presumably aware that there are laws in this area. There  were some solid but not particularly inspiring comments by Adv. Yossi Markovitch and by Adv. David Gilat. David noted that the employer-employee relationship is part of Patent Law, not Labour Law and felt that this was appropriate.

Adv. Eran Bareket made some interesting and, for me, thought provoking comments about forum shopping regarding service inventions, noting that the book hadn’t related to this issue. He pointed out that one can file suit in the labour courts, the District Court, with the Commissioner of Patents in opposing a patent as being the true inventor or owner, or with the committee for compensation for service inventions. He gave examples of where cases had gone to each forum and considered the state of affairs problematic, as the rulings would perhaps be influenced more by the forum, than by the issues.

Mr Amir Raveh, an inventor and investor in start-ups acknowledged no legal training and feigned not to have understood the terminology used by the other panelists. He stated that whereas a few years ago,start-ups were expected to have patent applications, nowadays, this is no longer the case and the issue when selling companies is human resources. He did not seem able to explain how one can sell human resources though. Employees can move companies, and non-compete clauses are rarely enforceable. He seemed to be involved in the currently trendy smartphone App field. I wonder how one can prevent competitors from under-cutting without patents?

The evening concluded with Dr Yanisky-Ravid thanking just about everyone, receiving a bouquet of flowers from a student groupie, and lots of photos of her posing with speakers and family members who had turned up in force to show their support.


Finjan Sues Symantec

July 2, 2014

Finjan Holdings has sued Symantec claiming infringement of 5 patents. See here.

Is it a storm in a coffee pot?


Amending a patent application under opposition

June 25, 2014

muzzle flash

This ruling by the Commissioner of Patents clarifies what types of amendments to claims may be allowed during oppositions and post grant, and in which cases the patentee has to provide justification for amendment. Unfortunately, in applying the rules, the commissioner got it wrong and allowed an amendment that causes embodiments not previously within the scope of protection to henceforth be protected.

Rafael Advanced Warfare Systems LTD opposed an attempt to amend the description of patent application no. IL 188066 titled “System and Method for Identifying Shooting”, which was filed in December 2007 by Optigo LTD and Elta Systems LTD,  transferred totally to Elta in December 2011, and published for oppositions at the end of July 2012.

On 25 October 2012 Rafael filed an opposition, submitting a statement of case in February 2013. Instead of responding, in August 2013, Elta applied to amend the application. Rafael opposed this as well, filing a further statement of case, and in January 2014, Elta filed their statement of case. Under Regulation 102, the main opposition is suspended until the allowability of the amendment is determined. The parties forwent the right to a hearing and the ruling on the amendment was given based on the written submissions.

In brief, the application claims identifying shooting from the Infra Red flash from gun muzzles.

The amendments included:

  • substituting the term locating and detecting into the claims, where the original claim related to detecting only
  • the term PDA (Photo Detector Array) was replaced with an imager comprising a non cryogenically cooled PDA
  • The term sensing was replaced with imaging
  • The term Near Infra Red NIR was replaced with Short Wave Infra Red SWIR
  • In addition, claims relating to the activity of the sensor and the information collected was amended

The marked up amended claims are reproduced below:

1. 2. A method for use in detecting and locating on of a muzzle flash event, the method comprising sensing electromagnetic radiation by an imager comprising a non cryogenically cooled Photo Detector Array (PDA) sensitive in at least a portion of the NIR and SWIR spectrum, thereby imaging the sensed electromagnetic radiation, wherein said electromagnetic radiation propagating towards the PDA undergoes filtering for selectively passing towards the PDA the electromagnetic radiation of one or more spectral ranges of relatively low transmission in atmosphere –of said at least portion of the NIR and SWIR spectrum, said sensing imaging having an integration time shorter than 10-2 s.

2. 1. A method for use in detection detecting and locating of a muzzle flash event, , the method comprising sensing electromagnetic radiation by an imager comprising a non cryogenically cooled Photo Detector Array (PDA) sensitive in at least a portion of the NIR and SWIR spectrum, thereby imaging the sensed electromagnetic radiation, wherein said electromagnetic radiation propagating towards the PDA undergoes filtering for selectively passing towards the PDA the electromagnetic radiation of one or more spectral ranges of relatively low transmission in atmosphere for said at least portion of the NIR and SWIR spectrum; and wherein said sensing imaging having an integration time shorter than a duration of the muzzle flash event; the method comprising applying staged processing to pixel signals of said PDA for consecutively reestimating the occurrence of said muzzle flash event while reducing the amount of data to be processed at each stage, and wherein said staged processing comprises a stage of parallel in-pixel processing.

3. The method of any one of preceding Claims 2, wherein said parallel in-pixel processing comprising analyzing the time dependent signals from each pixel independently of other pixelssensing is at least in part performed within the NIR spectrum.

4. The method of any one of preceding Claims, wherein said imager comprises at least 10,000 pixelssensing is at least in part performed within the SWIR spectrum.

24. A device for use in detection and location of a muzzle flash event, the device comprising an imager comprising a non cryogenically cooled Photo Detector Array (PDA), sensitive in at least a portion of the NIR and SWIR spectrum, and a filter of electromagnetic radiation configured and operable for selectively passing therethrough spectral bands corresponding to relatively low transmission of the electromagnetic radiation in atmosphere for said at least a portion of the NIR and SWIR spectrum, said sensing PDA having an integration time shorter than 10-2 s.

25. A device for use in detection and location of a muzzle flash event, the device comprising an imager comprising a non cryogenically cooled Photo Detector Array (PDA), sensitive in at least a portion of the NIR and SWIR spectrum, and a filter of electromagnetic radiation configured and operable for selectively passing therethrough spectral bands corresponding to relatively low transmission of the electromagnetic radiation in atmosphere for said at least a portion of the NIR and SWIR spectrum, the PDA having an integration time shorter than a duration of the muzzle flash event; the device includes a processing system adapted for applying staged processing to pixel signals of said PDA for consecutively reestimating the occurrence of said muzzle flash event while reducing the amount of data to be processed at each stage, and wherein said staged processing comprises a stage of parallel in-pixel processing.

26. The device of Claim 2526 or 27, wherein said parallel in-pixel processing comprising analyzing the time dependent signal from each pixel independently of other pixels the PDA at least partially being sensitive within the NIR spectrum.

27. The device of any one of Claims 26 24 to 2826, the PDA at least partially being sensitive within the SWIR spectrumwherein said imager comprises at least 10,000 pixels.

Following these amendments, applicant requested replacing sensing with imaging in claims 15, 16, 17, 20, 21, 22 and 23, and deleting the words sensing being  in claims 43-36 with appropriate grammatical amendments.

In claims 5-11, 18-19, 28-34, 38-42 the applicant requested adding the word wherein with appropriate grammatical amendments.

Applicant requested cancelling claims 5, 19, 30 and 44.

Claims of the parties

Elta claimed that the amendments were supported by the specification and that none of the amendments widened the scope of protection and thus fulfilled both Sections 65 and 66 of the Law.

Rafael countered that the amendments widen the claim-set, change the essence of the invention and claim elements not is the original application.

Rafael argued that “detecting and locating” is wider than merely detecting in that the invention now enables working out where the flash comes from. Therefore the amendment should not be allowed. Similarly, imaging includes sensing, but provides additional functionality and enables obtaining results not previously protected. Substituting SWIR for NIR enables using a sensor that does not work in the NIR part of the spectrum. Furthermore, the proposed amendments to claims 3, 4, 26 and 27 are substantial enough to effectively amount to new claims.

Elta responded that nothing claimed extends beyond the scope of the original specification. SInce the opposer did not provide evidence supporting his allegations, they should be thrown out under Regulation 102c, and the opposer should be considered as accepting the amendments.

The opposer considers that having to detect locate is narrower than merely detecting and should be allowed.slocating is supported on page 13 lines 17-21, page 53 lines 20-22. Similarly, “an imager comprising a non-cryogenically cooled PDA” is narrower than merely a  PDA, since it has to be an imager. Support is found on Page 10 line 6, page 7 lines 20-23 and 28-29. In general, the very sensing is wider than imaging, as imaging requires sensing, but also forming a picture. In general, adding additional stages to a process is inherently narrowing. Thus any amendments that narrow the scope of protection should be allowed.

The Ruling

This ruling was issued by the Commissioner, Asa Kling.

Opposers are not required to submit evidence where the issue revolves around an internal logic. The mere failure to submit additional evidence cannot be taken as abandoning the opposition. The proposed reading of the regulations was thus rejected.

Citing Section 29 of the Latent Law, post acceptance, the allowable amendments to claims are those allowable post-grant. i.e. amendments allowable under Sections 65 and 66.Such amendments have to be supported by specification and cannot be a widening in the scope of the protection requested. In addition, Regulation 95a allows post allowance amendments only on paying the requisite fee and stating the purpose of the amendment (so that the commissioner can ascertain that the amendment is indeed a narrowing of the scope of protection).

Citing then deputy commissioner Axelrod in IL 101537 Unipharm vs Merck, 30/4/2003 Section 21b, the applicant has to provide explanations to persuade the examiner that the amendments should be allowed. This was upheld by the Supreme Court in 11194/04 Polyvid polystyrene foam vs. Eli Givati et al. Essentially, according to the Commissioner, he has no choice but to allow amendments that correct a mistake in the claims and claim that which should have been claimed originally, if doing so does not widen the protection, but the onus is on applicant to show that this is indeed the case. The question is really whether after the amendment, the claims can catch something that would otherwise not be considered infringing.

As to locating, since detecting and locating is narrower than merely detecting, it was allowed. Similarly, a choice of a specific  type of imager is narrower than any detector and was allowed.

The Commissioner considered SWIR as relating to the range 0.7 microns to 1 microns  and NIR as relating to the range 1 micron to 3 microns. Since the range is smaller, he allowed this amendment. (I believe that this amendment is wrong as I will explain below).

As to claims 2 and 25, these also narrow the claim scope, but their intent was not stated and is not self-evident. Consequently, these amendments were rejected, as were the corresponding amendments to dependent claims 3 and 26. Claims 4 and 27 that replaced wavelengths with pixel densities were considered new claims and were rejected.

Any amendment not obviously narrowing, was not allowed, since the onus was on applicant to explain why additional or seriously amended claims should be allowed.

Adding words like ‘wherein’ and correcting grammatical errors was allowed.

In conclusion, the amendments to claims 1, 5-24, and 28-52 were allowed, as was deleting original claims 5, 19, 30 and 44.  The new clauses in claims 2 and 25 for ‘the method comprising’ and ‘the device includes’ were rejected. The amendments to claims 3, 4, 26 ans 27 were likewise rejected.

Costs were to be awarded at the end of the main opposition

COMMENTS

I am not familiar with the term SWIR. Wikipedia considers SWIR as being below 1.4 micron and NIR as being from 1-3 microns. see here.

As defined by Commissioner Kling, the SWIR range is below that of the NIR range. The amendment protects a system using a sensor of wavelengths below 1 micron, whereas prior to the amendment it would be an acceptable work-around. Clearly, this is a widening of the scope of protection. If, for example, visible light was claimed and an amendment specified green light, or part of the spectrum from red to green, this would be a claim narrowing, since the new range is totally within the older range. That is not the case, at least not according to the Commissioner’s own definition. If he sees this, I’d expect him to correct the ruling. If not, there are grounds to appeal since the Commissioner is correct legally, but wrong scientifically. For those not with me on this, try drawing Venn diagrams.

 

 

 

 


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