Suggestions Solicited

September 21, 2014

the jAZZ sINGER

Next Wednesday, we are holding a PCTea Party in Cinema City. The original program comprises a Champagne Reception cum Tea Party followed by a lecture on recent IP Developments by Professor Jeremy Phillips.

The management of Cinema City have offered me the option of following the lecture with a film show (movie).  It seems like a good idea, but with hundreds of thousands of films to choose from, what should we see?

As it will be  two days before Yom Kippur, the Jazz Singer (Al Jolson) springs to mind. Then there was the remake The Jazz Singer where Lawrence Olivier plays Cantor Rabinowitch. Is Olivier a more convincing Chazan than Jolson is a son of black cotton pickers?

Another option is Judgement Day or then again, Terminator 2, Judgement Day.

Kippur is another option.

On IP themes, Jeremy suggested the Man in the White Suit - with Sir Alec Guiness, which, if the suit is a kittel, could be appropriate for Yom Kippur as well. Another of Jeremy’s suggestions is Intellectual Property.

So what do you think?  Come up with a suggestion and we may screen the movie as an added bonus!


Israel Patent Office Requests Submissions Regarding Patentable Subject Matter

September 12, 2014

 

The postage stamp - a great idea, but probably not patentable

The postage stamp – a great idea, but probably not patentable

Section 3 of the Israel Patent Law states:

. אמצאה, בין שהיא מוצר ובין שהיא תהליך בכל תחום טכנולוגי, שהיא חדשה, מועילה, ניתנת לשימוש תעשייתי ויש בה התקדמות המצאתית – היא אמצאה כשירת פטנט.

An invention, whether a product or a process in any technological field, that is new, useful, may be used in industry and has an inventive step is a patentable invention.

Prior to 1995, the Law related to agricultural or industrial, but the term agricultural was dropped.

The Guidelines to Examiners follow TRIPS and patents are allowed for any technology invention. Unfortunately, this does not clarify what is and isn’t patentable.

There are exceptions. Natural organisms and methods of therapeutic treatment are specifically excluded by section 7 of the Law.

The courts in Israel have not clarified what is and what isn’t patentable subject matter.

Clause 5 of appendix b to the Guidelines for Israel Patent Attorneys 23/1 states that

את המונח “שימוש תעשייתי” ניתן לקרוא בהקשרו של התחום הטכנולוגי (הנדון להלן) ולאור היות האמצאה מועילה. בדרך כלל, אם ניתן לשייך את האמצאה לתחום טכנולוגי כלשהו ושיש בה את התועלת המובטחת על ידי המבקש הרי שגם ניתן לעשות בה שימוש תעשייתי

My best attempt to translate this is as follows:

The term ‘industrial use’ may be read with respect to technological fields, and the invention has to have utility, to be categorizable in a specific class and to have the required usage, and will thereby be deemed as having industrial applicability.

Of particular confusion to Examiners, are medical devices, surgical diagnostic and treatment; inventions that contradict the Laws of Nature (helpfully explained as patent applications claiming new physical theories without indication of their uses; genetic sequences and other biological material without use being discussed.

Perhaps not surprisingly, Examiners would like a little more clarity. Less surprisingly perhaps, the Israel Patent Office has solicited comments from the public. We welcome this initiative.

In addition to the above fields of endeavour, responses may relate to the meanings of industrial usage, utility, technology field, process or device, and also to other restrictions to granting patents, including on the basis of Section 17c, i.e. that some other recognised jurisdiction (typically USPTO) has ruled that the invention is patentable – and that the claims in Israel are identical to those granted.

Helpfully, the patent office has included links to Guidelines for European examiners and UK examiners:

http://www.epo.org/law-practice/legal-texts/html/guidelines/e/f_ii_4_9.htm

http://www.ipo.gov.uk/practice-sec-004.pdf

http://www.ipo.gov.uk/medicalguidelines.pdf

http://www.ipo.gov.uk/biotech.pdf

Responses may be submitted to the Israel Patent Office up until 30 October 2014 – when presumably there will be a Halloween party.

COMMENTS

Back in 2009, I held an event titled “The boundaries of patentability”. We examined stem cell research, business methods, software and the like. The question keeps coming up.

In the US, in Diamond v. Chakrabarty, 447 U.S. 303 (1980), paraphrasing Koheleth (Ecclesiastes), Judge Burger ruled that anything under the sun made by man was considered patentable. Some US patent attorneys have tried to patent plots for films. Children, though man-made are also not considered patentable. Over the years, I’ve come across a range of clients wanting to patent cold fusion, directed Brownian motion motors (that client actually managed to obtain a patent in the US on an earlier version and had apparently been around to every patent firm). I’ve had clients wanting to patent games, including chess openings. One academic with feminist leanings has suggested that the technological industrial requirement discriminates against women who are less technical, and has suggested that patents become available for non-technical inventions.

It is about time that gene sequences per se are recognized as not patentable in Israel. The Circular on the subject is wrong.

As the issue has not been raised, I assume that the guidelines for examining computer inventions are clear to examiners. I don’t find them clear, and nor do other practitioners who’ve I’ve spoken to.

Despite the working of this call for comments, I don’t think that the patent office considers new Laws of nature as patentable subject matter. The question is whether devices that operate according to principles hitherto unknown to science, or rejected by mainstream science should be considered patentable. Should the applicant have to provide proof of utility?

It occurs to me that patent attorneys have an interest in the range of patentable subject matter being widened as this may translate into extra work. It would be nice if the Association of Israel Patent Attorneys sets up a working committee and petititions its membership for comments so as to be able to submit an official position.

 


The Ethics of Outsourcing

September 12, 2014

The IP Ethics and Insights blog covers some interesting issues.

They’ve recently posted a disciplinary hearing against an Attorney-in-Law who collected fees from a client for a patent application and then outsourced to a small-timer at a fraction of the cost. The sub-contractor was not a partner or associate of the Attorney, and the disciplinary court ruled that in the circumstances, the client’s permission should have been obtained. See here for more details.

I find the case interesting as there are a couple of IP boutiques in Israel that have trouble holding on to competent staff and which outsource prosecution work to sole-practitioners, tech-transfer professionals that are moon-lighting and the like. One wonders if their clients are aware of and would approve of the relationship? Clearly the clients are paying over the odds for the service they receive.

Anyone have any thoughts?


Sakare and Sacara Competing Marks

September 11, 2014

Sakare boxes    Sakare shops   Sacara products    Sacara

Sakare and Sacara are trademarks that are co-pending and are confusingly similar so a competing marks procedure was instituted under Section 29 of the Trademark Ordinance.

Sacara LTD is an Israel brand of cosmetics. Sakare is a UK-based brand of Cosmetics owned by Soap & Co. UK LTD

Both companies filed their confusingly similar trademarks for their confusingly similar brands selling confusingly similar products at around the same time, and a competing marks procedure was initiated.

Sacara submitted a statement from a branding expert that testified to when he conceived and suggested the name. Soap & Co. UK LTD filed a submission on 9 July 2014 to have the expert testimony submitted by Sacara LTD struck from the record!

On 24 July 2014 Sacara LTD responded and on 31 July 2014, Soap and Co. filed a response to the response.

This is an intermediate ruling that relates to the request to strike the Statement.

On 30 March 2014 Gidi Adar who is a branding specialist prepared a statement for Sacara. During cross-examination he claimed that the statement was prepared on 27 December 2012. The statement claims that Adar offered Sacara LTD a list of 17 names. On 30 March 2014 at the end of the hearing the parties agreed that the question to be considered was when Adar first prepared the list and the parties would agree on an expert to determine when the computer file was created.

On 15 May 2014 Sacara noted that the sides were unable to agree on an expert to collaborate when the file was created and that Adar’s statement would be acceptable but that Soap and Co. could cross-examine him on it. Adar stressed that for the sake of clarity and for the record, the term file indicates the digital file containing document appended to the witness statement.

On 28 May 2014 in a hearing, Deputy Commissioner Bracha gave Soap and Co. (Sakare) 30 days to submit an expert testimony and Adar could be present whilst the file was examined. On 6 July 2014 Soap and Co. filed an opinion by Mr Yoav Zilberstein who is a forensic computer recompiling specialist. The specialist determined that the file was created on 23 December 2012 and that a second file with a similar name was created on 19 February 2012.

Although Sacara claims that the sides agreed that both files were authentic, the Sakare withdrew from this position. On 9 July 2014, Sakare requested that the expert testimony be voided as the file contained 15 names instead of 17 and the wrong date. Additional files examined constituted and illegitimate widening of the issues. Sacara claims that Mr Zilbersten’s job was to determine when the file was created and he did this as requested and there was no widening of the issues.

Reviewing Mr Zilberstein’s statement indicated that although he claimed to be addressing wider issues in his investigation he actually addressed the issue in question, i.e. when the file was created. The predetermined agreed scope of his research did not take into account that two files with the same name would be uncovered. Ms Bracha ruled that the Expert Statement did not exceed that agreed and did answer the question. She found additional support in Issues of Civil Procedure p 145, 11th edition, 2013. Furthermore representatives of both parties were there when Mr Zilberstein did his investigation. As to the list only having 15 and not 17 names, whilst the file did no include Glossy24 and Gloss24, it did include the name Sacara, so the testimony did show that the name Sacara was considered in December 2014. Then again, the appended list was from a file not in the computer. Although the parties are not in agreement as to the authenticity of the files, Ms Bracha felt that the evidence could be included as something contentious rather than as agreed evidence and both parties could relate to it later.

Ms Jacqueline Bracha therefore rejected the request to cancel the expert opinion but ruled that the applicant is allowed to cross-examine the expert witness on his testimony on a mutually acceptable and agreed date in December 2014 or January 2015. She saw no reason to allow the applicant to cross-examine the workers of the printing-house. The Applicant is, however, allowed to submit an expert testimony within 14 days. Costs will be awarded at the end of the competing marks proceedings.

COMMENT

The date of conception and even the first use of a mark is rarely decisive in a competing marks issue, and scope of actual use and reputation is generally given more weight. The third consideration is equitable behavior and I suspect that the summations will attempt to argue this point in relation to when Sacara thought of the name.

Both parties are using arbitrary names that nevertheless recall mascara. I warn clients trying to be cute when selecting trademarks, that they will invariably run into these kinds of difficulties. they rarely listen, which is why these competing mark, opposition and cancellation procedures happen.


Competing Marks – the extent of Power Of Attorney and submitting summaries in writing

September 9, 2014

The cook store 253157

In my previous post I noted that Gornitzky and Partners, Attorneys-at-Law, seem snowed under and unable to help their client, Surprise Import & Marketing of Gifts Ltd ward off an attack on the validity of their trademark in a timely manner. Well, amongst other time-consuming activities, it seems that they and the client have also got caught up in a competing marks proceedings.

The mark in question, Israel TM No.253157 “The Cook Store” in classes 8 Tools and work hand-operated; cutlery; razors, In respect of devices for lighting, hitting (heating?) extracting streams (steam?), cooking, cooling, drying, airing, supplying water, and sanitarian (sanitation?) purposes in class 11, Tools and Household or kitchen containers, combs and sponges, brushes (except paint brushes detergents), items for cleaning, glassware, porcelain and earthenware not included in other classes, in class 21.

The Cook Store

The mark was filed at around the same time as Israel TM No.  241892 also for the Cook Store in classes 8 and 11, this time filed by TABLE TOP COLLECTION LTD.

Although both marks include styling, the text is identical and the logos are similar. In fact one seems to be a red on white negative of the other in white on red.

An oral hearing was arranged on 28 May 2014, and Ms Helena Kazen, the owner of Surprise Import & Marketing Of Gifts Ltd did not turn up to be cross-examined on her statement, and also failed to inform the adjudicator Table Top Collection LTD. that she would not be coming. The lawyer representing Ms Kazen and Surprise Import, Gornitzky and Partners claimed to have Power of Attorney to represent her, and went outside with the Table Top’s representative who phoned their client. Table Top decided to give up on their mark and also on the expense of cross-examining Ms Kazen.

On 9th July 2014, Surprise Import requested that Table Top, represented by Ehud Porat, Attorney and Notary, put something in writing to the effect that they were dropping their application. On 10 July Surprise Import requested 30 days to update the court. On 14 July Ms Yaara Shoshani Caspi gave Surprise Import until 20 July 2014 to give their decision to Table Top and both parties were to inform the court as to what had transpired and how they intended to continue

On 20 July, Table Top informed the court, and on 29 July Surprise Import informed the court. In their report to the court, Table Top requested legal costs, clarification and an additional hearing on the main dispute or on intended.

In her ruling, Ms Shoshani Caspi noted that giving up on a trademark application is not a trivial matter, particularly in a competing marks procedure where both parties are considered equally entitled to the mark until a ruling is made. In this case, Grodinzky apparently negotiated on behalf of their client but required telephone confirmation for the agreement reached so the extent of their representation was unclear. In the circumstances, they were required to put into writing a specific request and have failed to do so prior to this ruling issuing

In the circumstances, the competing marks procedures is to continue and both sides are to present evidence and to be available for cross-examination.

In this instance Ms Yaara Shoshani Caspi did see fit to compensate the second applicant for Surprise Import’s behaviour and fined Surprise Import & Marketing Of Gifts Ltd 7000 Shekels in legal costs.


Draft Israel Patent Office Circular on Conditions for Allowing Dispensation from Oral Exam

September 4, 2014

 Oral_Dental_Exam

Background

At present, candidate patent attorneys must have a recognized science or engineering degree, must train for a minimum of two years under a licensed patent attorney who has been licensed for at least three years (in certain circumstances, those licensed abroad may have this period shortened), and the candidate must pass a written exam which is an exercise in patent drafting, and an oral exam.

On 28th August 2014, the Israel Patent Office published a draft circular that details a proposal for allowing candidate patent attorneys who study a Masters in IP Law to obtain a dispensation from the Oral exam.

Comments from the public are solicited, but the window for such submissions, which may or may not be taken into account, is two weeks, i.e. up to 12th September 2014.

I am translating the main interesting bits below. Afterwards, will publish some comments in this forum and invite feedback here. I haven’t decided if I will submit comments formally yet.

The Draft Circular

circumlocation office

Section 143c of the Patent Law 1967 grants the Minister of Justice authority to free categories of candidates from the examination requirements.

Section 135 of the regulations specifies that a candidate may submit evidence of the required knowledge to the Minister of Justice and obtain the dispensation. Regulation 128 specifies the syllabus or perhaps better, the subject matter of the oral exam.

Tsippi Livni

The Minister of Justice, the Right Honourable Ms Tzippy Livni, (who seems to be too busy trying to negotiate a peace settlement with the Palestinians to be able to cope with run-of-the-mill legal issues like licensing patent attorneys), has delegated this authority to the Commissioner of Patents to address this issue on her behalf.

Under this delegation of responsibility, the Israel Commissioner of Patents and Trademarks Asa Kling proposes that candidate patent attorneys that fulfill the following conditions will receive a dispensation from the oral exam:

  • The required knowledge is obtained in a Masters of Law program that focuses on IP Law that is recognized by the Council for Higher Education at a university or recognized college
  • The curriculum includes courses in all subjects on the syllabus defined by Regulation 128
  • The candidate completed the course of studies with the highest distinction (summa cum laude?) and in the top 20% of candidates of that year
  • The candidate was present in at least 80% of lectures

The candidate will have to provide official transcripts and certificates.

None of the above will limit the Commissioner’ discretion from granting dispensations on a case by case basis in exceptional circumstances on an ad hoc basis.

Candidates can still appeal to the Minister of Justice under section 143c.

This circular does not recognize any specific academic institution as fulfilling the required conditions.

COMMENTS

law school

Should obtaining a Masters degree in IP Law be sufficient to obtain a dispensation from sitting the oral theory exam? The IP Community is invited to submit their comments. Here are mine:

I think the reason that this issue is being addressed is that various institutions such as Haifa University offer a Masters Program in IP and, currently, it is a costly program that I have wondered who it attracts? If such course provide dispensation from the notoriously difficult oral exam for Israel Patent Attorneys, they will be more attractive and more students will study them. I suspect that Haifa University and, perhaps places like Tel Aviv and Bar Ilan that offer academic courses that are not degree programs in patents and other IP things and maybe even undergraduate law programs such as ONO that teach an IP Law program, have been lobbying for recognition.

oral exam

The committee of examiners, by Law, should include one patent attorney only. In recent years it typically included two Israel Patent Attorneys and a further Attorney-at-Law, where one of the patent attorneys was also an attorney-at-law. After a scathing critique on this blog, the patent office ruled that where one patent attorney is also a lawyer, this was within the law, but has stopped the practice. It wasn’t within any reasonable interpretation of the Law, but I understand why a retroactive cancellation of all issued licenses or automatic passing of those that failed the Exam was not an acceptable alternative. One also wonders how examiners could test potential candidates on the Law when they were apparently unfamiliar with it. I have also suggested that the oral exams should be scrapped.

The patent exams should be held three times a year. A candidate failing an exam is not supposed to be able to resit within six months and in practice exams are held at intervals of just over six months to prevent candidates from having to wait eight months. Previous Commissioner, Dr Meir Noam, ruled that candidates with less than a year’s training could not sit the exam yet. This was probably a good idea, but was, in my opinion ultra vires, and should have been the decision of the Minister of Justice.  There have been other legal shenanigans including a retroactive amendment of filing fees to take care of a thoroughly sensible but nevertheless ultra-vires initiative of then Commissioner Dr Meir Noam to stop printing hard copies of a journal that no-one read, but to allow publication on the Patent Office website.

I don’t have official statistics, but it seems that more candidates are passing the theory exam now that the committee includes only one patent attorney and two attorneys. This is not a surprise, since in a competitive and shrinking market, there was little incentive for a committee having a majority of its members being patent attorneys, to graduate and qualify more competition. Occasionally things go wrong. I know of cases in recent years where the candidate had previously worked for the examiner. It shouldn’t happen but it has. (The candidate’s comments regarding the services he’d have had to provide to qualify are inappropriate for publication on this blog).

As someone who has many years of academic study behind me (Talmud, Materials Engineering, Physics, Law), I do not dismiss academia as irrelevant. I do not, however, think that an academic theoretical knowledge should compensate for practical experience and knowledge of IP issues. The oral exam is not a theory exam. It is an oral test of practical knowledge. The examiners test that the candidate knows drop-deadlines and knows about designs and trademarks. Examiners often tested that the candidate was aware of the differences between main regimes such as regarding grace-periods, business method patents, software patents, gene patents and stem cell patents.

An IP Law degree, should, in my opinion, train candidates in specific areas such as Internet Law. It should be high level and specific. The IP practitioner’s qualification should be general. It should be detailed but not require the candidate to have formulated opinions or even to be knowledgeable about contentious issues.

Some IP practices do not provide training to trainees. They use them to draft applications, often for a percentage that gets whittled down in practice by the trainer taking his cut first, so that the trainee gets paid nothing. The system is immoral and probably illegal since trainees are considered as salaried employees unable to work elsewhere, but who don’t earn a minimum wage. Many of the practitioners operating the scam do not provide any training whatsoever. Other firms do provide a salary and training. A trainee should get hands on experience of all aspects of IP, not merely do the less profitable work to free the attorney from meeting clients. A big firm can provide a more formal training structure. However, sole-practitioner can train if he or she is willing to involve the trainee in all aspects of his/her practice including contentious issues. Indeed, as a sole practitioner, I did successfully train a couple of now licensed patent attorneys. After every sitting I get emails from new colleague-competitors thanking me for blogging IP decisions and recommending text-books to them.

No individual practitioner’s practice will cover all aspects of IP. The trainee will generally have to study some topics by his/herself. There are a couple of recent textbooks here and here on Israel IP Law, both reviewed on this blog. Reading these, reading the Law and regulations and being aware of court and patent office decisions, perhaps by following this blog, should provide the knowledge to let anyone reasonably intelligent (and most patent attorneys are) pass the theory exam.

I do read books and papers by Israeli IP academics and have met many of them. I do not think that they are really qualified to educate the next generation about what happens in practice. Some are too busy trying to change the system in light of his/her ideas of justice, to be aware of what actually happens. Supreme Court precedents do not necessarily influence examiners at the patent office. A masters’ course is a cash cow for the academic institution. The customers expect to pass with good grades and their expectations are often fulfilled.

oral exam 2

Someone competent should not need dispensation from the exam because he/she will be able to pass it.

Perhaps the current theory exam which is an oral viva could be modified and partially replaced by a written short answer paper, possibly multiple choice? Such an approach would at least standardize the requirements.

I believe that the US requirement of on-going training is also something worth considering. I am not sure how many licensed and practicing patent attorneys would pass the theory exam if they were to sit it again.

asa kling

Commissioner’s Kling’s proposal lists various requirements and does not automatically grant any successful graduate of a masters program in IP Law with a dispensation. It limits it to a percentage of the students. This means that the standard is subjective and not objective.  It is designed to keep numbers down. I don’t think doctors, accountants or attorneys at law get dispensation from professional qualifying exams by virtue of a having a degree. I think a Master’s program should be academic and not vocational. Qualifying to advise and provide services to the public requires practical knowledge.

jeremy phillips  Some years back, Professor Jeremy Phillips successfully negotiated with the UK Institute of Patent Attorneys that the Queen Mary Institute of Intellectual Property Law’s Masters’ program provide a professional qualification. He correctly points out that many competent practitioners don’t know how to teach. There are, however, some substantive differences between the UK Institute membership and the Israel Qualification in that anyone can write and prosecute patents in the UK, whereas in Israel one has to be a licensed Attorney-at law or a Patent Attorney.

Many years ago, Howard Poliner, who now works for the Ministry of Justice drafting IP Laws and amendments, used to offer a course to trainee patent attorneys. It did not replace the Exam but provided preparation for it. I think this is a useful service that universities should offer. Indeed, I thought about teaching such a program myself.

The exact scope of what patent attorneys can and cannot legally do in Israel is a contentious issue between patent attorneys and attorneys-at-law. Licensed patent attorneys interpret the relevant law (sections 19 and 20 of the Israel Bar Act and section 154 of the Israel Patent Law) somewhat wider than do various patent searchers, patent portfolio managers and others. See here for more information.

Dr NoamAlthough I am concerned that the profession should be open to anyone with an appropriate competence and not to a limited number of new practitioners each year, I am rather horrified that the Association of Israel Patent Attorneys has not seen fit to hold an extraordinary general meeting about an issue that is clearly of extraordinary relevance to the membership. I suspect the fact that the chairperson, Dr Meir Noam is actually not a practitioner in private practice and hasn’t been for over a decade including a period that he was the Commissioner, may have something to do with the lack of urgency he is showing to this issue. Of course, the Association Israel Patent Attorneys could be working on an official position paper that they intend submitting without coordinating with the membership, but I don’t suppose they would be so sneaky, would they?

Talking of being sneaky, sneaking out this draft circular at the end of August, with AIPPI conference in a couple of weeks and the High Holidays coming up is a good way to ensure that there isn’t significant discussion and debate on the issue. I have no doubt that the universities have been lobbying this for a while.

Hopefully, having shot off criticism in all directions, some readers may see fit to respond and we can have an open debate on the topic. All comments that are to the point and reasonably polite will be published.


LES Event – Various Aspects of Antitrust and Intellectual Property Rights

September 2, 2014

LES

INVITATION TO A LES ISRAELEVENT

Three distinguished speakers will cover Various Aspects of Antitrust and Intellectual Property Rights

  • Adv. Gertjan Kuipers, partner in De Brauw, Blackstone, Westbroek Law Firm, The Netherlands will speak on the topic: “Ten years Technology Transfer Block Exemption Regulation – What’s new (in the revised 2014 version)?”
  • Dr. Alan D. Miller, Faculty of Law and Department of Economics, Haifa University will speak about “Challenging the Law on Licensees’ Ability to Launch Patent Challenges”
  • Dr. Shlomi Parizat. Hebrew University of Jerusalem and former Chief Economist at the Israel Antitrust Authority will speak on “Contesting Patents in order to push for a settlement”

The event will take place at BEIT HAPRAKLIT, 10 Daniel Frish St, Tel Aviv, on Sunday, September 7, 2014, between 16:00-19:00.

The event is free to LESmembers.

Non-members: 100. NIS charge.


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