Israel to Join Madrid Protocol

April 9, 2010

In a much-waited for development, the Israel Patent and Trademark Office has announced that Israel is to implement the Madrid Protocol.

On 31 May 2010, Frances Gurry, Director of WIPO will pay an official visit to Israel and formally announce Israel’s ascendency to the Protocol. Implemented will take place some 3 months later on 1 September 2010.

The protocol will enable Israeli firms to file trademarks in Israel, and barring oppositions, get a decision as to registerability within 12 months. Using local representation, Israeli firms will be able to extend protection to some or all of the 67 other member a vastly reduced cost, making export to the global market place more attractive.

It will likewise become easier for foreign entities to register marks in Israel.

The Knesset amended the Trademark Ordinance to facilitate joining the Madrid Protocol back in 2007. However, implementation was held up due to problems with computerization of the Trademark Examination Department and associated difficulties in meeting the tough deadlines.

These problems were gradually ironed out due to tremendous work by the dedicated and capable trademark examiners lead by Nurit Maoz.

Dr. Meir Noam – the Commissioner of Patents, Ms. Nurit Maoz, Head of the Trademark Department, Ms Lee Maor – Head of the Israel Desk at WIPO, and the other people who finally brought this to fruition are all to be congratulated for this achievement, and we hope and trust that there are no more hiccups in implementation.


Reduction in PCT Search Fees at the EPO

March 22, 2010

As of 1 April 2010, the search fees payable to the EPO as an International Search Authority of the PCT will be $US 2485 instead of $US 2515, as previously.

This is not an April fools day joke.  I suspect that the reduction reflects the relative strengths of the Euro and the US Dollar, and possibly the fact that the USPTO is actually performing searches and not merely accepting payment for same.


Madrid Trademark Filings Down 16% on 2009

March 21, 2010

According to the World Intellectual Property Organisation (WIPO), new trademark application filings dropped by 16% with some 35,195 applications for trademarks received in 2009, compared to 42,075 in 2008.

In Japan, trademark filings were up a modest 2.7 percent, despite patent filings there being significantly down. In Singapore, trademark filings are up 20% and in South Korea, they are up by a third. It seems that the Far East was less badly hit than Europe or the US by the recent recession.

Israel has not yet implemented the Madrid Protocol. I suspect it will do so in June. We’ll see.


Israel Patent Office to be closed from 29th March to 6th April for Pesach

March 3, 2010

The Israel Patent Office is to be closed from the 29th March 2010 to 6th April 2010 for Pesach (Passover).

As occurs a few times a century, there is agreement between the Western (Catholic and Anglican protestant) and the Eastern (Greek Orthodox) churches that Easter Sunday is 4th April 2010, so the Israel Patent Office is simultaneously closed for Easter. ( am not using the word ‘coincidentally’ - since there is a correlation between Easter and Pesach of course).

Ramadan finishes just before Rosh Hashana so the Israel Patent Office will apparently be open over Ramadan and Idel Fitteh.

Any deadlines occurring over the closure will be extended until 7 April 2010. There is a legal loophole that could be utilized by foreign entities missing a Paris Convention deadline for filing PCT applications to gain an extension. Please contact me if there is a need to do so, and we will explain the procedure.


IP Developments in Jordan and Egypt

February 5, 2010

The Jordanian Government was a little greedy in raising their trademark registration fees, and seemed to have forgotten that in a World Wide Recession, many multi-national corporations can simply forgo Jordanian rights. After successful lobbying from Jordanian trademark attorneys, the Jordanian Government has now decided to reduce the fees from US$930 to US$645. We note, however, that this is still more than the fee for filing a mark in one class in Israel.

Meanwhile the Egyptian “Ministry of Scientific Research, Academy of Scientific Research & Technology, Patent Office” has issued Declaration number 3 in respect of payment of annuities for the PCT national phase applications in which an extension of the time till March 31, 2010 was granted instead of 31 December 2009. The due date for annuities shall be calculated from the filing date of the international application.

We note that in Israel, annuities are only due, post allowance. Thus, this seems better value for money as deferring costs is a saving, and the costs will only be incurred if the application is allowed.

We further note that this past week, the Commissioner of Patents and Trademarks in Israel has issued his 79th Circular. His predecessors, though not quite as productive in this regard as he is, also issued some Circulars.

Not only is filing patents and trademarks in Israel generally cheaper than in Jordan and Egypt, and, we presume, more valuable due to more advanced industrial capability and the higher purchasing power of the inhabitants, but the Egyptians will have to start issuing circulars at a frenetic rate to catch up with the reforming power of Dr. Meir Noam!

We look forward to inviting our Jordanian and Egyptian colleagues to join us in using IP to promoting peace and security throughout the region.


Israel to be downgraded in the US Special 301 Watch list

February 2, 2010

As informed readers will know, Israel appears on the infamous U.S. blacklist of countries that fail to protect copyright adequately.

In an agreement reached last week in Washington in talks headed by Israel Ministry of Industry, Trade and Director General Sharon Kedmi, Israel is to be taken off the list of offenders and will merely appear on the Watch list.

Of course the list has little to do with copyright. What creates tensions with the US is Israel’s burgeoning generic drug industry. Teva is the world’s leading manufacturer of generic drugs but there are other Israeli generic players such as Unipharm, Rafa and others.

With a desire to add Israel to the OECD, the watch list rating is a political embarrassment - as much to the US as to Israel, since the list is largely the result of bullying tactics by lobbyists, rather than a reflection of morals or ethics, and informed observers are only too aware of this. Indeed, one of the results of re Bilski could be the US itself not fulfilling TRIPS obligations railroaded through the WTO that by-passed the more democratic WIPO.

Background

In 2006, Israel re-amended a poorly written amendment to the Patent Law from 2004 providing patent term extensions that allows local generic manufacturers to manufacture and export as soon as the main patent has expired in at least one of the other countries having patent term extensions.

The original amendment was poorly written and then Deputy Commissioner of Patents Israel Axelrod interpreted the amendment to allow the applicant for the patent term extension to choose which country to base their application for extension on. I believe that the preamble to the proposed amendment makes his interpretation untenable. The second ammendment was designed to clarify the Knesset’s intent. Axelrod was side-ways promoted to the Beer Sheva district court instead of his becoming the Commissioner of Patents; a position that was empty for quite a while until the present encumbent, Dr. Meir Noam, assumed the reins.

Kedmi and his delegation have now apparently come to an agreement to scale back the number of countries in the list that Israel can rely upon. the development requires backing of the Finance Ministry.

It is easy to see generic manufacturers as pirates, but we note that Teva has a good track-record of invalidating pharmaceutical patents in US courts. Such patents should never have issued, and not always merely because of later discovered prior art. In a number of cases, the applicants were found guilty of fraud or other misconduct.

Unipharm successfully attacked half a dozen pharmaceutical patents in Israeli Opposition proceedings last year. The pharma-generic debate is largely about business issues rather than ethical ones. Indeed some critics point out that the original five year extension terms for pharmaceutical patents was a gift from legistlators to pharma companies that the health funds, the sick and ill are paying for.

Backing down to bully-boy tactics is one way of dealing with adverse pressure. It is a little like the way Olmert solved the long-standing dispute with the International Red Cross by addopting a neutral diamond shape instead of Israel’s Red Star of David logo. I think that Groucho Marx’ attitude regarding joining clubs that would have him as a member has a lot to say for itself. What Israel lacks is some national pride. That said, joining the OECD would be nice…


Electronic filing; PCT, US and Israel

January 19, 2010

The PCT has announced that its Online Document Upload Facility became fully operational on Monday, 18 January, 2010. This facility permits PCT applicants and/or their agents to submit documents relating to international applications in PDF format, via the WIPO website.

One advantage claimed for this development is that post-filing electronic documents can be submitted quickly and efficiently to the IB, thus avoiding the costs and delays relating to paper mailing whilst overcoming image quality problems that can result from fax transmissions or paper scanning.

However, the service is not to be used for the initial filing of PCT international applications online to WIPO Geneva as a Receiving Office, only for subsequent submission of later-filed documents that are normally addressed to WIPO in its capacity as International Bureau only. Furthermore, the process only works if the International Bureau has already received the Record Copy from the receiving Office and started processing the application.

The long list of documents that may be uploaded includes amendments to the claims under PCT Article 19,requests for recording change of person, name, address, etc., notices of withdrawal, requests for Supplementary International Search (SIS), and where applicable, translations of international applications and sequence listings under PCT Rule 13ter for SIS purposes, informal comments on the written opinion of the International Searching Authority and general correspondence for the attention of the IB. Further guidelines are to be found at http://www.wipo.int/pctdb/en/

 Comment

All the submissions listed are text based submissions that I routinely fax and in addition to the fax receipt generated by my system, I get an acknowledgement from WIPO by return. I’ve never had a problem with the faxed document being considered unclear. Thus I am not sure that this development is in any way significant, except for the possible eventual reduction in paper usage.

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 On 14 January 2010 President Barack Obama told technology executives at the Forum on Modernizing Government:

 ”Believe it or not, in our patent office — now, this is embarrassing — this is an institution responsible for protecting and promoting innovation — our patent office receives more than 80 percent of patent applications electronically, then manually prints them out, scans them, and enters them into an outdated case management system…This is one of the reasons why the average processing time for a patent is roughly three years.”

It’s a great quote. So what if Barak is apparently wrong and the USPTO stopped doing that back in 2006???

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Another great quote: Dr. Michael Bart, the Head of the PCT Receiving Office in Israel told me that a colleague at the EPO stated that “A paperless patent office is like a paperless toilet. “

Incidentally, the Israel Patent Office is also gearing up for electronic filing.

What of the ecological issues? Well the following story is absolutely true: whilst working at the UK National Physics Laboratory, NPL, in the early Nineties, I used to receive the internal newspaper of the Department of Trade & Industry. Then secretary of State for Trade & Industry Michael Hesseltine requested ideas for minimizing the paper-chase to be submitted on the requisite form in triplicate.

And finally, the ultimate all-in-one machine – one of my inventions, that I considered filing - the combined fax, printer, photocopier with shredder and bin. Does the whole process without human intervention.


WIPO Provides Access to Israel’s Patent Data

November 23, 2009

WIPO’s PATENTSCOPE® now includes the patent data collections of eight patent offices: African Regional Intellectual Property Organization (ARIPO), Cuba, Israel, Republic of Korea, Mexico, Singapore, South Africa and Vietnam.

WIPO has been working closely with these patent offices to ensure the data collections are fully searchable and has provided partial funding for Israel’s computerization process.

The availability of Korean patents is important as there is a lot of technology developed there and these are otherwise rather difficult to access. They have not yet been carried by Delphion, for example.

 


Israel PCT Receiving Office – have your say!

November 3, 2009

The Israel Patent Office has published a questionnaire offering users of the PCT Receiving Office in Israel the opportunity to express their satisfaction or dissatisfaction with the service provided and to comment on tentative plans to go paper-less. 

I, for one, have always found Head of Receiving Office, Dr. Michael Bart and his staff forever courteous and helpful, and, apart from filing in Geneva on Mondays where the Paris deadline was Saturday or Sunday, or for saving clients excess page fees for gene sequences, prefer filing in Israel. 

I can’t link to the questionnaire, but Liat King liatki@justice.gov.il at the Israel Patent Office will send one to interested parties.  The deadline for responding is the end of November. 


Patent Backlogs Continue to Mount

September 23, 2009

backlog

According to WIPO, the backlog in pending patent applications around the world that are waiting for examination now stands at 4.2 million – see the following press release.

One way to make the examination system more efficient is, of, course, greater collaboration between the various national / regional patent offices.  Although there are differences regarding patentable subject matter and the degree of inventive step or non-obviousness required for a claim to be patentable, broadly standards are similar and novelty is supposed to be absolute.

The Israel Patent Law includes a highly efficient examination evasion procedure detailed in Section 17c, wherein the claims allowed by any of a long list of examining countries can be obtained in Israel without substantive examination.  Under the current Commissioner of Patents, Dr. Noam, the idea has been extended to include a positive ISR, allowance based on an allowed patent without formally invoking Section 17c and other efficiency improving innovations.

Associates in Australia have brought to our attention that

“in response to the economic downturn, the Australian Patent Office is offering applicants the chance to withdraw their request for examination and therefore to forgo the obtaining of patent rights in exchange for a refund of the official fee of Au $420″.  

This is, of course, another way to reduce backlogs.


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