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

April 14, 2015

park Carusso

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

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

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

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

PCT

PC Tea

PC Tea

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

Trademarks and Designs

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

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

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

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

Wipe-o

WIPE-O !

WIPO’s Arbitration and Mediation Center

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

Databases

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

Lunch

ravioli

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

Copyright 

real life

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

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

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

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

Closing session

men in suits

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

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

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

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

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

Recommendation

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

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

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

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

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


PCT Direct

March 31, 2015

DIrect

The Israel Patent Office has announces an experimental service called “PCT Direct”.

PCT Direct is intended to make the process more efficient and to increase the value of the International Search Report (ISR) and International Preliminary Examination Report (IPER) that the Israel Patent Office produces as a Searching and Examining Authority of the PCT (Patent Convention Treaty).

The service is aimed at PCT applications claiming priority from an Israel Application and the system is designed to help respond to the Notice Prior to Examination of the Priority Application

The Applicant will be able to relate to all issues in the Notice Prior to Examination. The response is, however, not part of the PCT request. It seems that the idea is to file a PCT request as a response to a Notice Prior to Examination, submitting a marked up and clean copy, details of other prior art known to examiner and details of first publication.

If the art cited by the Applicant is of value, half the search fees will be refunded.

The PCT response and interaction will be considered as a response to the prosecution of the priority document if not yet allowed.

Apparently the Israel Patent Office is only the second authority, after the EPO, to offer this exciting new service.

 

COMMENT

I am confused as to the point and purpose of this development.

abbreviation

I have an aversion to abbreviations.  PCT, IPER, ISEA, ISR – at least the Talmudists had the excuse that scribes wrote by hand and parchment was expensive. Nevertheless, WIPO (World Intellectual Property Organization) uses them, so I suppose we must conform.

The EPO’s description of the PCT Direct service may be found here.

More substantively, The PCT application should be filed within 12 months of priority. Israel Applications publish automatically at 18 months, so one wonders what first publication is being considered here.

I think that this initiative is designed for applications that are made special and examined immediately, either due to them being green applications that are environmentally friendly, or due to applicant petitioning based on age, suspected infringement and the like. It is possible that this has ramifications for a PCT application claiming priority from an earlier PCT application.

It also seems that the applicant need not actively file PCT responses in the parent file but can rely on the system doing so automatically.

Not too long ago, the search report of the PCT was considered as something of little value and was often ignored by examiners who examined to grant patents.  Then came the Patent Prosecution Highway, and then the Superhighway. I think this further development is designed to demonstrate that the Israel Search and Examining Authority, is willing to grant patents based on their PCT work, as is, apparently, the EPO and to create additional trust in the system. Hopefully this will translate into less duplication and a faster, more efficient, high quality service.

This is, however, speculation.

Readers who can briefly summarize what PCT Direct is all are about are cordially invited to do so.


WIPO To Make Two Stops in the Holyland

March 18, 2015

road show

WIPO, the World Intellectual Property Organization that is manages the PCT system for filing International patents and the Madrid Protocol for filing international trademarks has a team of roving lecturers who will be performing lecturing in Israel.

Concerts Seminars are scheduled for 13th April in Beer Sheva and for the 15th April in Haifa.

More details may be found here

The provisional program in Beer Sheva Park Carusso for Science, 79 Atzmaut Street, is as follows:

Monday, April 13, 2015

9.30 a.m. – 9.50 a.m. Opening Session

Welcome addresses by:
Mr. Asa Kling, Director, Israel Patent Office (ILPO)
Local industry\Chief Scientist\Politician TBD
Mr. Yoshiyuki Takagi, Assistant Director General, Global Infrastructure Sector (GIS), WIPO

9.50 a.m. – 10.10 a.m. Topic 1: The ILPO as WIPO’s cooperation partner and service provider for the users of the IP system

Speaker: Mr. Asa Kling, ILPO\

10.10 a.m. – 10.30 a.m. Topic 2: Introduction to WIPO
Development of the International Legal Framework
Major Intellectual Property Economic Studies

Speaker: Mr. Moshe Leimberg, Senior Program Officer, Section for Coordination of Developed countries, Department for Transition and Developed Countries (TDC), WIPO

10.30 a.m. – 10.45 a.m. Topic 3: The Patent Cooperation Treaty (PCT) –
Introduction and Future Developments

Speaker: Mr. Matthew Bryan, Director, PCT Legal Division, Patents and Technology Sector, (PTS), WIPO

10.45 a.m. – 11.00 a.m. The PCT – The actual practice (questions, experiences, discussion)

Moderator: Mr. Michael Bart, Head, PCT division, ILPO

Speakers: Mr. Matthew Bryan, WIPO

Additional speaker(s) Local practitioner(s) TBD

Questions and Answers

11.00 a.m. – 11.15 a.m. Coffee break

11.15 a.m. – 11.35 a.m. Topic 4: Global Intellectual Property Systems
The Madrid System for the International Registration of Marks
The Hague System for the International Registration of Industrial Designs

Speaker: Mrs. Debbie Roenning, Director, Legal Division, Madrid Registry, Brands and Designs Sector (BDS), WIPO

11.35 a.m. – 11.50 a.m. Global Intellectual Property Systems: The actual practice (questions, experiences, discussion)

Moderator: Ms. Anat Levi-Ne’eman, Head, Trademarks Division, ILPO

Speakers: Ms. Debbie Roenning, WIPO

Additional speaker(s) Local practitioner(s) TBD

Questions and Answers

11.50 a.m. – 12.10 p.m. Topic 5: WIPO’s Arbitration and Mediation Center

Speaker: Mr. Matthew Bryan, WIPO

12.10 p.m. – 12.40 p.m. Topic 6: Global Databases for Intellectual Property Platforms and Tools for the Connected Knowledge Economy, with an emphasis on WIPO Green and WIPO Re:Search

Speaker: Mr. Yoshiyuki Takagi, WIPO

12.40 p.m. – 1.00 p.m. Topic 7: WIPO digital copyright developments

Speaker: Mr. Paolo Lanteri, Legal Officer, Copyright Law Division, Culture and Creative Industries Sector, WIPO

1.00 p.m. – 1.30 p.m. CLOSING SESSION

Questions and Answers

1.30 p.m. – 2.30 p.m. Lunch break with specific Sessions (Patents, Trademarks, Databases, and Copyright)

2.30 p.m. – 3.00 p.m. Ceremony to present the ILPO prize for an academic thesis on various fields of IP

Presenter: Dr. Daniel Ben Oliel, Associate Professor, Faculty of Law, Haifa University

The Wednesday Program in Haifa will be held on Wednesday, April 15 2015 at the Technion in the Batler Hall, Neeman Centre, Technion:

9.00 a.m. – 9.20 a.m. Opening Session

Welcome addresses by:
Mr. Asa Kling, Director, Israel Patent Office (ILPO)
Local industry\Chief Scientist\Politician TBD
Mr. Yoshiyuki Takagi, Assistant Director General, Global Infrastructure Sector (GIS), WIPO

9.20 a.m. – 9.40 a.m. Topic 1: The ILPO as WIPO’s cooperation partner and service provider for the users of the IP system

Speaker: Mr. Asa Kling, ILPO

9.40 a.m. – 10.00 a.m. Topic 2: Introduction to WIPO
Development of the International Legal Framework
Major Intellectual Property Economic Studies

Speaker: Mr. Moshe Leimberg, Senior Program Officer, Section for Coordination of Developed countries, Department for Transition and Developed Countries (TDC), WIPO

10.00 a.m. – 10.15 a.m. Topic 3: The Patent Cooperation Treaty (PCT) –
Introduction and Future Developments

Speaker: Mr. Matthew Bryan, Director, PCT Legal Division, Patents and Technology Sector, (PTS), WIPO

10.15 a.m. – 10.35 a.m. The PCT – The actual practice (questions, experiences, discussion)

Moderator: Mr. Michael Bart, Head, PCT division, ILPO

Speakers: Mr. Matthew Bryan, WIPO

Additional speaker(s) Local practitioner(s) TBD

Questions and Answers

10.35 a.m. – 10.50 a.m. Coffee break

10.50 a.m. – 11.10 a.m. Topic 4: Global Intellectual Property Systems
The Madrid System for the International Registration of Marks
The Hague System for the International Registration of Industrial Designs

Speaker: Mrs. Debbie Roenning, Director, Legal Division, Madrid Registry, Brands and Designs Sector (BDS), WIPO

11.10 a.m. – 11.25 a.m. Global Intellectual Property Systems: The actual practice (questions, experiences, discussion)

Moderator: Ms. Anat Levi-Ne’eman, Head, Trademarks Division, ILPO

Speakers: Ms. Debbie Roenning, WIPO

Additional speaker(s) Local practitioner(s) TBD

Questions and Answers

11.25 a.m. – 11.45 a.m. Topic 5: WIPO’s Arbitration and Mediation Center

Speaker: Mr. Matthew Bryan, WIPO

11.45 a.m. – 12.15 p.m. Topic 6: Global Databases for Intellectual Property Platforms and Tools for the Connected Knowledge Economy, with an emphasis on WIPO Green and WIPO Re:Search

Speaker: Mr. Yoshiyuki Takagi, WIPO

12.15 p.m. – 12.35 p.m. Topic 7: WIPO digital copyright developments

Speaker: Mr. Paolo Lanteri, Legal Officer, Copyright Law Division, Culture and Creative Industries Sector, WIPO

12.35 p.m. – 1.00 p.m. CLOSING SESSION

Questions and Answers

1.00 p.m. – 2.00 p.m. Lunch break with specific Sessions (Patents, Trademarks, Databases, and Copyright)

COMMENTS

We suspect that this portends Israel joining the Hague System for the International Registration of Industrial Designs or some other design upheaval.

In general I applaud the idea of not doing every seminar in Tel Aviv or Jerusalem. However, the majority of practitioners to not live in Haifa or Beer Sheva. Why start these events at 9 am? Surely a 10 am kick-off would be more appropriate where people are traveling in?


PCT Filing Fee Reductions in January 2015

December 14, 2014

wipo_pct_logo270savings

The official fees incurred for filing, prosecuting, registering and renewing patents, designs and trademarks in Israel are linked to the cost of living index. Twice a year, on 1 January and on 1 June, they are adjusted. It seems that living in Israel is ever more expensive, and each adjustment makes each fee a few Shekels more.

WIPO works differently. From time to time their fees for PCT related services are adjusted, but not necessarily upwards.

As of 1 January 2015 the basic international filing fee for a PCT application will drip from $1471 to $1384. Excess page fees will drop from $17 a page to $16 a page.

If one elects the EPO as the international Search and Examination Office, the search will cost $2366 instead of the current $2545.

Using PCT Easy saves $104 per application, and filing electronically as XML or similar saves $208. It is possible to combine these and file electronically using PCT Easy, saving $312.

 

 

 

 


LLM in Patent Law at Haifa finally on its way

December 11, 2014

haifa university law school

Back in June 2009, I reported on the ceremonial launch of Haifa University’s Masters in Law program in Patent Law – see here.

Recently fired Minister of Justice, Tzippy Livni, authorized the Commissioner of Patents to rule on whether such programs would provide a dispensation from patent office exams for would-be patent attorneys. In September of this year, I reported about the standards for obtaining dispensation from the theory exam for patent attorneys. See here and here. Essentially, so long as the degree covers all subject matter, such as trademarks, designs, basic foreign requirements, international treaties and procedural issues, the top 20% graduating will be entitled to a dispensation from the theory exam.

The long awaited Master’s Degree in Patent Law at Haifa University is finally on the Patent Prosecution Highway on its way. The first intake is this January. Some candidates have already signed up, but there are apparently places available.

It occurs to me, that someone interested back when the program was launched has had time to do the prerequisite science or engineering degree, and to have then done two years on the job training (hitmachut). No doubt however, there are some additional wannabe patent attorneys out there who think that this degree is the key to fame and fortune.

We wish the faculty and students every success with this endeavour!


Holiday Closures

September 11, 2014

Closed

The Israel Patent Office is closed from 24-27  September 2014 (inclusive) for Rosh Hashana and from
8-18  October 2014 (inclusive) for Suckot.

Yom Kippur is Friday evening and Saturday, so the patent office is closed anyway, however we note that the UN is not merely closed anyway for Yom Kippur, but is actively closed since it is being recognized as a holiday.

Any official Israel Patent Office deadlines due to expire during these holidays will automatically be extended
to the next workday.  This includes Paris filing dates so PCT applications falling due on Rosh HaShana or Suckot may be timely filed immediately afterwards. However, the USPTO may have reservations for a PCT application claiming priority from a US provisional application.

Please note: Sundays are regular workdays in Israel.


Haifa University’s WIPO Credited Masters in IP Law

September 10, 2014

אוניברסיטת חיפה- הפקולטה למשפטים

Haifa University have announced their Masters’ Program in Patent Law. It’s WIPO accredited.

Looking at the draft circular from the patent office regarding such programs giving dispensation from the oral exam, it does not seem that it will be an easy way to get licensed as an Israel Patent Attorney. It may, however, be a good systematic way to learn the material.

It is actually an interesting point whether WIPO which is a broad-based section of the UN and gives an equal voice to all member states is necessarily relevant for general practice, where only a handful of regimes are of interest. No doubt in time, we will see if graduates of the program are better patent attorneys. I would hope that it gives a broad understanding of patents and that its graduates become counsel to firms.

 


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