Super Dooper Patent Prosecution Highway

January 5, 2014

test pilot

Israel and 17 other examining authorities have now set up a Global Patent Prosecution Highway.

The 17 offices involved in the GPPH pilot are IP Australia (IP Australia), Canadian Intellectual Property Office (CIPO), Danish Patent and Trademark Office (DKPTO), Hungarian intellectual property office (HIPO), Icelandic Patent Office (ELS), Israel Patent Office (ILPO), Japan Patent Office (JPO), Korean Intellectual Property Office (KIPO), National Board of Patents and Registration of Finland (NBPR), Nordic Patent Institute (NPI), Norwegian Industrial Property Office (NIPO), Portuguese Institute of Industrial Property (INPI), Russian Federal Service for Intellectual Property (ROSPATENT), Spanish Patent and Trademark Office (SPTO), Swedish patent and registration office (PRV), United Kingdom Intellectual Property Office (IPO), and United States Patent and Trademark Office (USPTO). 

An application first examined in one, may, if at least one claim is found to be novel and inventive, be used to accelerate Examination in other pilot jurisdictions.

COMMENT

I suspect that with just about everything being fast-tracked, the system will probably break down. One wonders if a pile up on the Worldwide Superhighway could result in everything grinding to a halt. Still, there are no human test pilots, so no harm done.

The PCT, was, of course, supposed to achieve this. If, instead of ignoring PCT search reports, the various national phase jurisdictions would consider their findings, I suspect that backlogs could have been dealt with years ago.


Israel Supreme Court Rules that Rights Owners Should Bear the Costs of Destroying Infringing Goods Stopped by Customs Where Collecting from the Importer is not Possible

August 4, 2011

Back in January, I reported on a decision by Judge Abraham Yaakov of the Tel Aviv District Court, that ruled that the Israel Customs Authority was wrong to charge the rights owner for storage and / or destruction of imports that infringed copyright or trademarks in cases where the costs can’t be recouped from the defendant. See: http://blog.ipfactor.co.il/2011/01/12/levis-successfully-sues-counterfeit-jean-importer-into-israel-judge-slams-israel-customs-for-billing-levis-for-storage-and-disposal-of-the-jeans/

The Israel Supreme Court has now heard an appeal by the Customs Authority concerning a shipment of fake Christian Dior Couture shoes that were imported by a West Bank Arab that abandoned the shipment and proved impossible to collect from.

In accordance with Section 200A of the Customs Ordinance, which was legislated in 1999 to conform Israeli law with TRIPS, the Customs Authorities detained the shipment and notified Christian Dior, who initiated proceedings and provided bank guarantees of NIS 5000.

Dior claimed that the bank guarantees could only be used to compensate defendants in the event that the Court dismissed the charges of copyright or trademark infringement.  Customs claimed that the money could be used to cover costs of storage and destruction of the goods.

Judge Abraham Yaakov of the District Court (the same judge who ruled in the Levi’s case) ruled that the shipment was to be destroyed by the importer, which would bear the expenses. The District Court held that the Customs Authorities (i.e. the tax payers) should bear the costs of storing and destroying infringing goods should the importer default.

The Supreme Court reversed this judgement and ruled that the rights owners should bear the cost of storage and destruction of infringing goods where Customs cannot collect from the importer. The Court saw no justification to use public funds to cover the costs of protection of private property. It interpreted Section 200A of the Customs Ordinance, which complies with Section 53(1) of the TRIPS Agreement, as allowing the Customs Authorities to use the bank guarantee for that purpose. The decision was given by Judge Asher Gronis. Judge Elyakim Rubinstein concurred but also recommended that the government consider requesting further guarantees from importers to cover the IP rights owner’s expenses or used other means to facilitate collection such as withholding tax rebates.

The Case: 3960/10 Israel Customs Against Christian Dior Couture and Iyad Habas, before Judges Rubinstein, Arbel and Gronis.  June 20, 2011.

COMMENT

Although I enjoyed reading Judge Yaakov’s ruling, I think that the Supreme Court is correct to reverse it.


Israel Ministry of Trade and Industry Hosts WTO TRIPS Conference

February 22, 2011

The Israel Ministry of Trade, Industry and Labour has hosted a two-day conference on TRIPS.

The impressive speaker’s list on the first day included:

Dr Guy Pessach of the Hebrew University, who spoke about the controversial Premier League decision, (see Moving Copyright Goalposts?), now on appeal. Although I agree that he was correct to emphasize the TRIPS and Budapest elements that Judge Michal Agmon Gonen had ignored,  I think he was wrong to ignore the Israel Supreme Court Decision in Tele-Event that should have been binding precedent.

Mr Wolf Meier-Ewert of the intellectual Property Division of the WTO in Geneva, who spoke with authority about geographic indications and appellations of origin.  He gave the example of Jaffa, Israel’s only appellation in the Lisbon Register. Unfortunately, however, as I pointed out, since the mark is used for oranges grown in Australia and South Africa to provide year round coverage, the mark is somewhat controversial, and, speaking from the floor, Deputy Commissioner of Patents and Trademarks, Noach Shalev Shmulovich, provided more details on the topic.

Adv. Reuven Azoff of the Israel Tax Authority who spoke about enforcement by Customs.  He explained that the cost of storage and destruction of infringing goods was charged to the rights holder, and informed us, when I queried the statement, that Judge Abraham Yaakov’s decision regarding Levi’s Jeans (see Judge slams Israel Customs for billing Levi’s for Storage and Disposal of the Jeans) was being appealed.

Mr Pierre Arhel of the WTO Secretariat lectured throughout the two days. His talks were informative, well constructed and comprehensive. Although his English was flawless, the lectures were given in an Inspector Clousseau type accent that was slightly distracting. Among other issues covered, he presented a short overview of WTO and the main TRIPS agreement, discussed the Public Health dimension of enforcement and the non-WTO Anti-Counterfeiting Trade Agreement ACTA, spoke authoritatively on patents and trade secrets under TRIPS, on how anti-competitive practices could delay the development fo generic drugs, patenting lifeforms and traditional knowledge.

The Honorable Judge Gideon Ginat spoke about IP protection in Israel, and gave a balanced, reasonable presentation.  He believes that in patent cases, the judges should use court appointed experts and that judges within the court should specialize in IP. He is not sure that specialist IP courts are really justified. Judge Ginat endeared himself to me, by introducing himself in the coffee break and informing me that he follows the blog.

The most controversial presentation by far, was given by the Honorable Judge, Dr Michal Agmon-Gonen, who justified her position in the Premier League case by arguing that streaming technologies were not copying and that free access to films, sport events and the like, was a fundamental human right(!)  She acknowledged that viewers rights had no basis in the Law, but felt that they could, nevertheless, be read into the Law. She is concerned by powerful IP lobbies ganging up on the little guy and quoted Lawrence Lessig extensively.

The thing is that Lessig is an academic. Dr Agmon-Gonen is a judge. As an academic position; indeed, as a lobbyist position, her views were admirable. I too, think that the balance has been lost and copyright protection is too long. However, I think that judges should leave policy to the government, legislation to the Knesset, and should also be bound by Supreme Court precedent.  In other words, I am in favour of activism, just not of judicial activism. It was no surprise to learn that Dr. Agmon Gonen was an article clerk for Supreme Court President and Supremo Judicial Activist Aharon Barak.  

It may be that the Knesset is slow in legislating IP rights, but this is no longer a problem. Once public access is defined as a Human Right, no doubt it can be considered a judicially created Basic Law and used to overturn any Knesset legislation. After all, to further democracy, we can’t let the democratically elected legislative and government sign international treaties and write laws can we?    

The event was well put together, mostly interesting, but nevertheless, sparsely attended. We suspect that poor advertising combined with the fact that the event was spread over two days, contributed to this development.

The first day was attended by some 30 participants. From the pile of not collected folders, there were some 30 IP practitioners that registered but didn’t show up. Our firm was, however, well represented, by Adv. Aharon Lewin, head of litigation, by Adv. Aharon Factor who heads up our trademark department and is active in working with customs on enforcement, and by myself.

The organizers generously provided lunch in their canteen and there was coffee and tea, soft drinks and rogeluch and burekas throughout the day. The food was not up to the standard of that provided by IP firms in hotels, but as this was funded by the tax payers,  was, I consider, most appropriate.

The event was held in the Generic Govt. Building opposite the Bank of Israel. I noted with approval that the synagogue there has a dedicated women’s section, and that there was a room set aside for breast-feeding purposes.

We congratulate Barak Sharabi of the Ministry of Industry, Trade and Labor, for putting the thought-provoking and challenging event together.


Levi Strauss Successfully Sues Counterfeit Jean Importer into Israel; Judge slams Israel Customs for billing Levi’s for Storage and Disposal of the Jeans

January 12, 2011

In a very interesting ruling, Tel Aviv Judge Abraham Yaakov ruled that Israel Customs were wrong for attempting to charge Levi Strauss for the cost of storing and eventually destroying counterfeit jeans confiscated, according to Customs, on behalf of Levi Strauss.

Israel Customs attempted to argue that Section 200a of the Customs Ordinance provides that Customs can impound goods believed to infringe copyright or registered trademarks for three days, but further action requires the rights holder to post a deposit. Customs argued that the deposit was not only to compensate the importer if he were to prevail in court, but also to cover Customs expenses should the importer prove untraceable,  go into bankrupcy or liquidation, or otherwise default.   

The judge’s ruling included the following reasoning:

  1. The Customs Authority itself acknowledged that the primary party responsible for paying for destruction of infringing goods is the importer. Since the rights holder has done nothing wrong, why should they have to pay costs?
  2. Although Customs claimed that the rights holder is proactive in the legal proceedings, this is not necessarily the case.  Customs can seize and hold goods without the rights holder being an active party.
  3. Even if the rights holder informs Customs, about their rights and about an infringing shipment, Customs are obligated to act as a law enforcement agency, not merely as protecting the financial interest of the rights owner.
  4. Although Section 53(1) of the TRIPS agreement includes such a provision, the judge ruled that Section 200b of the Israel Customs Ordinance instituted in the wake of TRIPS rejected billing the rights holder for the actions performed by customs and established that the deposit paid by the rights holder to cover the seizure of goods should be refunded in full if the courts rule that the goods indeed infringe.

 The court pointed out that the interpretation of the Customs Authority was equivalent to arguing that the rights holder should serve as a guarantor the infringing importer.

As to the claim by Customs that the only party that benefits from destruction of the infringing goods is the rights holder, the judge succinctly stated that it would have been better had this never been claimed, and went on to rule that it was in the national interest to uphold intellectual property rights and to enforce the criminal law. Indeed, having signed TRIPS, the State had accepted the obligation to enforce IP rights.

In summary, the court ruled that the only reason for posting bond was to prevent frivolous actions and to protect the rights of wrongfully charged importers.

Levis was awarded NIS 100,000 for statutory damages and NIS 10,000 costs from the first defendant who did not attend the hearing, with the second defendant who did show up, having to pay a mere NIS 2500 costs with the goods to be destroyed.  The Customs and VAT Department of the State of Israel was ordered to pay NIS 10,000 in legal fees to Levis.

The Case: T.A. 3261-03/10 Levi Strauss & Co. vs. Algamal, Alnazer Odeh and The State of Israel Customs & VAT Authority 


Brazil Considers Imposing Trade Sanctions on the United States

March 18, 2010

The Brazilian Government has successfully sued the US at the World Trade Organization (WTO) for illegally subsidizing cotton producers, thereby making it difficult for Brazilian companies to compete therewith.

America spearheaded GATT and TRIPS and essentially set up the WTO to enforce their IP vision on the world, instead of working with the more democratic WIPO. It is, therefore, kind of ironic that the US has now been successfully sued via this system they created.

In Executive Order No. 482, the President of Brazil, Luiz Inacio Lula da Silva has announced that Brazil will implement trade sanctions and reserves the right to introduce counter-measures at its disposal. These include subtraction (presumably suspension) for a limited period of patent protection for and not enforcing patents to US entities for pharmaceuticals, veterinary medicines, agro-chemicals and biotechnology patents and not enforcing the copyright of US creative works including public performances thereof.

They also reserve the right to grant licenses to importers and manufacturers of patented goods without compensation to the US rights holders, and to allow reproduction and broadcasting of US copyright works without consent or compensation to the rights holders, and / or to impose a surcharge on US companies wishing to register patents and plant varieties and / or to impose a special tax on licensing fees. For more details, see http://www.diblasi.com.br/information.pdf.

It is not the first time that the US has been shown to have inferior IP standards and not to fulfil its obligations to other states. They have been condemned by Europe for allowing Irish music to be played in US pubs and restaurants without payment of royalties, and for not recognizing the rights of the Cuban and European owners of Cuban rum.

From an Israel perspective this development is interesting, since the Israel government seems to be more flexible (spineless???) to American pressure and is apparently considering amending the Israel Patent Law regarding patent term extensions in a quid pro quo for US backing to enable Israel to join the OECD, this despite the fact that Israel Law is already within the requirements of International Law and that many members of the OECD do not have stricter rules than Israel in this regard.

Furthermore, we note that whereas subsidizing growers is clearly illegal, overly stringent IP rights are not necessarily in the public interest. It should be appreciated that IP rights are monopolistic and that granting stronger IP rights to the patentee or creator is not in the greater public interest. The purpose of the patent system is to encourage development and creativity for the good of all.


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…


The Implementation Game by Caroline Deere – A book review

January 16, 2010

The Implementation game – The TRIPS Agreement and the Global Politics of Intellectual Property Reform in Developing Countries by Carolyn Deere is an analysis of how different developing countries implemented their TRIPS agreements. A nicely bound, 342 page book with 68 pages of biography, this is a library reference work in every sense of the word.

The book is a thorough analysis of an important topic. The subject matter is, however, somewhat dry, and my first impressions were that whereas no Law, International Relations or Economics library should be without it, few busy patent practitioners would find a book about implementation and enforcement in the third world sufficiently pressing to read the material.

Pharmaceutical companies, do, however, file very widely. Recently, I have had cause to advise one of my ethical drug developing clients. To be able to select a Latin American or African country and to find relevant information fully indexed and accessible, of developments from 1995 to 2007  in a single volume was very useful.

The book retails at a mere $80 which is rather less than an hour’s consulting for a patent attorney working with pharmaceutical companies. Tremendous value and I am only sorry that it has taken me so long to post this review.

What is particularly nice is that the book does not take sides between the IP developing West and the developing countries. Refreshingly, it analyses without moralizing.

ISBN13: 978-0-19-955061-6

ISBN10: 0-19-955061-1,  published by Oxford University Press in 2009.


European Commission Takes US to Task in Special Report

July 28, 2009

Possibly in retaliating to the United States’ infamous annual US Special 301 Report, the European Commission has released a report finding fault with a number of American IP practices.

In the report: United States Barriers To Trade And Investment For 2008[pdf] Europe calls the pot black and charges the US with having failed to bring its Copyright Act into compliance with World Trade Organization rules on IP since radio music can be played in pubs and clubs without paying royalties (the Irish music case). According to the report, European producers and performers “do not enjoy broadcasting rights granted to the US” as a result.

Another “particularly problematic” issue is geographical regional names, with a number of European wine names being considered “semi-generic” by the US.

Another issue of concern is the US IP boycott of Cuba, where, to pressurize the Cuban government, the trademark for Havana Club rum is considered unenforceable, contrary to the WTO Agreement on Trade-Related Aspects of Intellectual Property Rights,TRIPS.

According to the report, the US government frequently fails to comply with Article 31 of TRIPS which requires governments that use patents to promptly inform the patent right holders when governments use patented technology.

On recognising the first to file a patent application (like the rest of the world) rather than first to invent, the US discussion of patent reform is “going in a good direction,” the EU said.

Another cause for concern is US provisions on plant varieties in the Plant Patent Act which “seriously impede trade in breeding material for ornamental plants.”

For good measure, software patentability and the first to invent as a pose to first to file were also examined.


Israel Remains on US Priority Watch List

May 4, 2008

For the third year running, Israel appears on the Priority Watch List Read the rest of this entry »


EU Calls on US to Fulfill TRIPS Obligations re Copyright

March 24, 2008

Ambassador John Bruton, Head of the European Commission Delegation to the United States, issued the following statement on March 19, 2008:

“At a time when there is increasingly impressive cooperation between the EU and the U.S. in combating intellectual property infringements, it is high time Read the rest of this entry »


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