Is a Do-it-yourself Opposer entitled to legal costs?

July 2, 2015

do it yourself

Unipharm, an Israel ‘Branded Generic’ supplier has a long history of successfully opposing and canceling pharmaceutical patents.

In this instance, they successfully opposed IL 164925 titled “Pharmaceutical Compositions and Kits Comprising Combinations of Valsartan, Amlodipine and Hydrochlorothiazide” to Novartis which led to the application being abandoned. If an Opposer wins an Opposition proceeding, the opposer is entitled to claim real costs. In this instance, Unipharm, represented by their CEO Dr Zebulun Tomer, filed a Notice of Opposition and statement of case directly (without using the services of Adv Adi Levit). The opposition resulted in Novartis abandoning Israel Application No. IL 164925 titled “”. As he did not use legal counsel, Dr Tomer asked for an assessment of costs based on the quantity weight of material filed and the number of references that had to be learned, rather than real and actual costs incurred.

Novartis sees things differently. They believe that Unipharm have failed to show any additional work beyond what they usually do regarding every patent application in Israel, and, citing Regulation 516a of the Civil Procedural Law 1984 and various Israel Patent Office Decisions, argued that no costs should be awarded.

Discussion

Deputy Commissioner, Ms Jacqueline Bracha noted that both sides concede that were Unipharm to have engaged professional counsel they would be entitled to real costs incurred provided that they were considered realistic and necessarily incurred in the opposition until the point where it ceased. The argument is simply a question of whether a Do It Yourself Opposition conducted by Unipharm’s management entitled them to some sort of compensation for the time spent and work performed on the opposition where they chose not to engage outside counsel.

In this instance, Ms Bracha noted that without any paper work to go on such as an affidavit from the CEO or the firm’s accountant indicating how many hours were spent by staff and what their time was worth, it is difficult to estimate costs, and even ‘estimate costs’ have to be anchored to something.

Unipharm claim that examination of the Statement of Case which was the last filing before the application was abandoned, is self-evident. In IL 143088 where Unipharm killed Glaxosmithkline LLC’s patent, Unipharm were awarded 2500 Shekels including the fee for filing the opposition – which was clearly incurred in this instance as well.

Meanwhile, Novartis note that in IL 166621 Unipharm successfully opposed an application filed by Neurocrie Bionsenses Inc. and requested 110,000 Shekels costs. The Commissioner assessed the costs and noted that the work by the CEO was not proven.  Furthermore, in other precedents, the Patent Office has ruled that employees time that was within the course of the daily work, should not be considered as being a legal expense. In that instance, the Commissioner ruled costs of 6000 Shekels by way of estimate – in that case, the application was abandoned after evidence was filed.

Costs are not a punishment for the loser, but are compensation for the winner. That said, the opposer is providing a public service [in causing the canceling of a patent application that should not issue on its merits due to lack of novelty, obviousness, etc]. This is very different from most civil cases where the decision only affect the parties concerned. Ms Bracha considers the public service of more significance than the significance to the opposer.

In 248/95 Fabio Perini SPA vs. Industrie Meccanishe Alberto Consani SPA, president Winograd considered the opposer as being a ‘soldier of the commissioner’. This public good aspect was recognized in Opposition to IL 200343 Tzori Naaman Victor LTD vs. Ronen Aharon Cohen, 23 March 2015. MS Bracha then drew a parallel between the Opposer and someone bringing a class-action who is entitled to compensation for the public duty performed.

Weighing up all the above (and, I suspect rolling the dice), costs of 3500 Shekels were awarded to Unipharm.

IL 164925 to Nvartis, Opposed by Unipharm, Ruling re Costs by Jacqueline Bracha, 5 May 2015

COMMENT

I should issue a health warning. It is highly inadvisable to file patent opposition procedures without professional counsel. It is highly inadvisable to go up against one of Israel’s larger Patent firms, representing a multinational company that is ranked by Forbes as the third largest healthcare company worldwide among other rankings that Novartis is proud of.

The thing is that Dr Tomer has handled more patent oppositions than the vast majority of patent attorneys or attorneys-in-law in Israel. Furthermore, he has handled more than the majority of Israeli attorneys-in-law specializing in IP.

As to the issue of whether compensation is deserved, one could regard Tomer as saving Novartis real lawyers fees. Certainly Tomer’s time has some value. That said, I think there is an assumption on Ms Bracha’s part, that the result of the patent application being abandoned   means that there is merit in Unipharm’s opposition. This may well be the case. They have an impressive track record killing pharma patents as readers of this blog will be aware. But herein lies the rub.

You see, Novartis and others have come to realize that it may be strategically sensible to abandon patents that are opposed by Unipharm rather than to fight for them. The Israel market is small. If Unipharm present their evidence and arguments, the patent could be invalidated worldwide. This has happened to Smithkline, Lundbeck and others that Unipharm have taken on in recent years.

If Unipharm has not had to win their opposition on its merits, there may be no prima facie basis for assuming that the patent is actually invalid. Indeed, I opposed a patent on behalf of a Govt. Ministry against a subcontractor, and the subcontractor explicitly denied all my points but stated that rather than fight the govt. they would abandon the patent. In that case I am fairly sure that we had good arguments. In this instance, who knows?

Cheaper medicine is generally considered as being in the public interest. However, so is pharma research, and companies like Novartis need sales revenue to be able to develop new drugs.

I suspect that the pharma lobby will be unhappy with this decision, and those that see Unipharm as a Robin Hood pharmacist will applaud it.

That as may be, I suspect that neither side will appeal as the costs in so doing will be totally out of proportion to the possible financial benefits.


SOS – Has anyone managed to work the new Israel Trademark Office Paperless System Using Smart-cards?

June 18, 2015

connectivity

On 27 May 2015 this Israel Patent Office announced a new paperless interface for loading-up and filing documents with the Trademark Department.

I asked my brother, who handles our trademark issues, to test drive the system and then write a guest blog post.

Unfortunately, despite the nice Power-Point presentation that we received by email, and the ever friendly patent office staff, we have been unsuccessful in getting into the system.

With Explorer one gets an error message to check various options and if the problem continues to contact the administrator. The problem is that once they are checked, one still gets the Error messages.

The specific error message is “This page can’t be displayed” Turn on TLS 1.0, TLS 1.1, TLS 1.2 in Advanced Settings and try connecting to https://trademarksonline-sc.justice.gov.il again. If the problem persists, contact your site administrator.

Brother Aharon (ne Jeremy) contacted me. I couldn’t get further than he did. We’ve updated Internet Explorer (IE) to IE9 and above, specifically IE11, which we then dumbed down to IE9. We tried Chrome and even installed and tried Firefox which is not supported by the Israel Patent Office, but which I had to install on my computer to obtain an electronic signature from WIPO when the last one ran out.

I am not acting on the helpful suggestion by someone in the Trademark Department to install Windows 9. Apart from the fact that there is no such animal, Windows 8 is a disaster, Noone uses Windows 10 yet, certainly not government people, and Windows 7, which is installed on my brother’s machine, works fine.

I took the computer around to a Cousin Nadav who does computer support for the Office of the Prime Minister and so is extraordinarily well equipped for the role of Administrator. Nadav showed his competence by cutting and pasting the error message into Google and establishing that the error is one of Microsoft Explorer. Nadav then followed various comments from technicians of various levels of competence but to no avail. He then showed Super Administrator competence by copying the error message and adding the word “solved”.

This didn’t work either.

It seems that the problem is one of Explorer that is not unique to the Patent Office and getting into various other on-line portals such as Amazon One-Click have similar problems. We can manage the non-smart card access for plebs, but Aharon needs the smart card access to do the high level trademark things that are reserved for Attorneys-in-Law and other trademark animals. Unfortunately, it seems that the old fashioned paper submissions are no longer possible due to this Internet Access. I will have no problem with that once the Internet Access works.

Anyway, to cut a long story short, my cousin suggested that I contact other trademark practitioners and find someone who has solved the problem.

If among Dr Meir Noam’s sterling achievements at the helm of the Israel Association of Patent Attorneys the long awaited website was up and running, and if the camel committee defining the website had thought of having a forum for these issues, I’d post there. In the interim, I assume that some of the 500 odd followers of this blog are trademark practitioners and at least one of you has had a similar problem. If so, how did you solve it? By all means phone me if it easier for you than emailing.

A free box of stress relieving PC Teabags is available for anyone who wishes to type a polite and helpful response which I will be happy to share with other practitioners.


Israel Patent Office Server Outage

May 18, 2015

server

With reference to Fig. 1, the Israel Patent Office server 1 will be down from 5 PM (Israel time) on 18th May until 6 am the following morning. This means it will be disconnected from network 2 and patent attorneys 4A-C will not be able to access content stored in databases thereon (Fig. 2).

This is a planned outage due to maintenance requirements.

TOS-day_of_the_dove_klingons

Rumours that there is a planned Klingon takeover of the Israel Patent Office are believed to be without substance.


US Court of Appeals Rules Standard Innovention’s Adult Toy Modest

May 14, 2015

toy

According to the International Trade Commission, Standard Innovation’s patent US 7,931,605 titled as used in their kinesiotherapy devices (that’s the CAFC term, Standard Innovation refers to the device as the We-Vibe product) is infringed by Lelo’s adult toys.

Lelo’s claims of invalidity due to obviousness were rejected.

On Appeal the Federal Circuit overturned the ITC ruling.  Since under section 337 investigations, a party can stop patent infringing products from being imported into the US if the company is shown to have made “significant investment” in the US. The Federal Circuit considered that as the components were made in China, Standard Innovention’s investment was modest.

The ruling is here.

The ruling is actually significant in that it relates to whether patents are enforceable in the US by Anton Pillar injunctions and customs seizures, etc. where the product is manufactured in China from largely off-the-shelf components.

What is the point of having a patent if you can’t enforce it?

Actually, to be fair, the patent is enforceable, or at least, there is a presumption of validity and this may be used to obtain judgement and possibly and probably preliminary injunctions. It is not, however, enforceable through the ITC.


LES Event on Employee Inventions and University Inventions

May 11, 2015

les

LES Israel is hosting an event on Monday May 18th 2015 on Employee’s Inventions and University Inventions in Israel and Germany.

Speakers include Prof. Dr. Heinz Goddar, Adv. Eran Bareket, Adv. Tal Band and Adv. Gil Granot-Meyer from Yeda R&D.

Full details may be found here

COMMENT

The topic of service inventions is a recurring theme. I co-hosted a conference on this together with WIPO and ONO back in 2009. See here.

Following this event, the State of Israel sued Omrix claiming that their blood clotting adhesive was a govt. service invention. I argued that the strategy taken was flawed in that it invalidated the US patent. Furthermore, I noted that the attorney who the State outsourced to had an apparent conflict of interest as Omrix had been bought out by Johnson & Johnson and the attorney had been handling their trademark portfolio.

More recently, the State of Israel sued employees of the Volcani Institute claiming that they had stolen a service invention.

The topic is widely covered by Dr Shlomit Yanitzky Ravid in a book based on her PhD thesis. See here.


Upcoming conferences

April 28, 2015

IPR conference

With the annual INTA bun fight in San Diego, it is easy to overlook other IP events.

Kim Lindy’s highly professional annual IP Best Practices Conference is scheduled for May 11th and 12th in Tel Aviv. Details may be found here.

Wipo

The Ninth WIPO Advanced Intellectual Property Research Forum, a joint three day collaboration between WIPO and the Faculty of Law, Hebrew University of Jerusalem, is taking place from May 26 to May 28 at the WIPO campus in Geneva. This initiative was put into place and initially organized by Ms. Li Maor and is headed by Dr. Guy Pesach, Associate Professor, Faculty of Law, Hebrew University of Jerusalem. Moshe Leimberg has taken over from Li Maor, and can be contacted for more details.


Nanobiotica

April 26, 2015

nanobiotica

Israel Trademark No. 246664 for “Nanobiotica” was filed by Dieteti Kol LTD. On it being allowed, Nanobiotix filed an opposition.

Nanobiotix have a pending mark of their own, No. 243678 “Nanobiotix” for classes 10, 42 and 44, and they requesting suspension of the opposition pending a decision in the Nanobiotix case which they consider as relating to the same issue. That case was the subject of a competing marks proceeding, but was allowed and is now being opposed.

Nanobiotix argues that the present proceeding should be suspended to save legal resources and to prevent contrary rulings issuing. The Applicant claims that there is ongoing negotiations towards a compromise. However, the Opposer denies that this is the case.

The Applicant does not wish to suspend the proceeding and considers the Opposer’s request as inequitable in light of the negotiations. The Applicant further considers the Opposer’s case is weak, inter alia due to them not yet having products on the market, whereas Nanobiotica is a brand that has already been launched and has clients.

Ruling

The Deputy Commissioner, Ms Jacqueline Bracha, ruled that the issue at stake is that of a pending proceedings, and that in 9/75 El Okvi vs. Israel Lands Authority, P. D. 29 (2) 477  it was ruled that the authority to suspend proceedings should be used to accomplish two aims: (i) to avoid unnecessary work for the opponent, and (ii) to avoid unnecessarily troubling the courts, which occurs where two courts rule on the same substantive, legal or factual questions and the duplication leads to a danger of inconsistency.

In the present situation the two proceedings relate to identical issues but the tribunal is identical, so there is no reason why the rulings should be contrary. Consequently, there is no rationale to suspend the hearing and Ms Bracha rejected the request.

However, since the two parties acknowledge that this issue is identical, both in terms of law and in terms of the identities of the parties involved, the two cases should be combined and heard together. This is appropriate on grounds of efficiency and to minimize use of court time, and the costs to the parties themselves. The trademark regulations do not provide guidance for combining cases, and guidance may be drawn from Regulation 530 of the Code for Civil Court Proceedings 1984.

The opposition concerning Israel Trademark No. 243678 “Nanobiotix” has reached the evidence stage and on 11 January 2015, the Opposer there, who is the applicant in this case, submitted her evidence. To facilitate combining the two cases, the combination will occur after both sides has submitted their evidence in each case. The parties may submit evidence relating to the two cases separately or in a single submission.

No costs were awarded.

COMMENT

There was an earlier interim ruling regarding posting a bond for these marks. See here. The C.E.O. of Nanobiotica, Zion Yedid, is fighting without legal representation. Nanobiotix is represented by Adin – Liss. We suspect that this has at least passing relevance to the attempt to suspend the proceeding instead of the obvious consideration to combine the cases.


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