The Tel Aviv District Court has upheld a decision by the Israel Patent Office  to refuse Eveready’s Trademark Application Number TM 204, 832 for shaving creams and 204,499 for razors and shavers  for the slogan “Free your skin”.

However, the court has over-turned the assumption that slogans are always descriptive or laudatory and therefore invariably non-registerable, ruling that they should be examined like any other mark. Consequently, the current Commissioner or Patents and Trademarks Adv. Assa Kling has cancelled Patent Office Circular MN 29 that held that slogans cannot be registered.

BACKGROUND

On August 28, 2010, then Deputy Commissioner Noah Shalev Shmulovits upheld a decision of the trademark examiner, that Israel Trademark Number    was invalid for registration.

Shmulovits based his decision on Israel Patent Office Circular Number M.N. 29 in which then Commissioner of Patents and Trademarks Dr Meir Noam ruled that slogans could generally not be registered.

Since then, there have been a number of exceptions. See  for example party-like-a-rockstar,  im-lovin-it, shufersal, its-all-for-you, bleach-free and diamond in your pocket  for specific rulings.

Eveready appealed the decision to the courts. In a well-reasoned ruling, Judge Yitzhak Anber has ruled that slogans may often be laudatory or descriptive, but should be considered as simply multi-word marks and judged on their merits.

21488-05/11 Eveready vs. Commissioner of Patents and Trademarks, Tel Aviv District Court  by Judge Yitzhak Anber, 8 December 2011.

The long awaited guidelines regarding the patentability of software inventions in Israel have finally been published by the Israel Patent Authority.

In brief, it appears that the term ‘industrial application’ as required by section 3 of the Israel Patent Law 1967 may be fulfilled by patents in any field of technology.

1. Software inventions having a real world effect are considered technological and thus patentable. To establish whether a  software implemented invention is technological it has to be considered in its entirety. I think this means that the Commissioner of Patents requires examiners to take a holistic approach to the question.
2. Business methods are not considered industrial, nor are algorithms.
3. A real world effect may be indicated by something that may be perceived by the senses.
4. Software that creates new links and causes a computer to work better or faster may be considered a real world effect.
5. Software per se, abstract thought processes and algorithms not having a real world effect are not patentable, but may be protected as a literary creation under copyright law.
6. Beauregard claims are allowable.
7. A software invention that enables automation that is more than simply doing something automatically that could previously be achieved manually, may be patentable.  I think this means that software inventions that enable a result to be obtained that could not hitherto realistically be obtained, could be patentable.

Helpfully, the relevant guidelines for the Examiner are appended to the circular, together with a number of specific examples from real patent applications, a verdict regarding whether the claimed invention is patentable subject matter and a brief explanation.

For reference purposes, I am reproducing the examples below:

GB 2391348

A data processing apparatus, comprising:
a processor;
a compiler for compiling application code to generate instructions for execution by the processor;
a non-invasive trace unit coupled to the processor for generating, from input signals received from the processor, trace signals indicative of the instructions being executed by the processor;
the compiler being arranged to control the compilation of the application code dependent on the trace signals.

This is considered patentable.

GB 2407655

A method of operating a computing device having an operating system and a dynamic link library containing a plurality of functions accessible by an executable program, each function in the dynamic link library being associated with an ordinal number, the method comprising:
Providing the dynamic link library as a first part and an extension part each containing one or more of the plurality of functions;
Causing the executable program to link to functions in the first part directly by means of the associated ordinal numbers;
and Causing the executable program to link to functions in the extension part indirectly via a further library containing additional functions.

This is also considered patentable.

WO2007002296

A method for automatically calculating a discount for a customer offered by a merchant through a reservation system, comprising:
accessing at least one reservation file relating to a reservation;
accessing transaction data relating to at least one payment card transaction;
comparing one or more elements of the transaction data against one or more elements of the reservation file to determine a match;
and electronically calculating the discount based on[e or more] one or more elements of the transaction data and one or more elements of the reservation file.

This is considered non-patentable as although computer implemented, the real world effect is a business method which is not considered as having a technological effect.

EP 1301912

A method of operating a transaction processing system enabling users to authorize transactions, said system comprising a central transaction processing system (19) having at least a first data communications interface and a second data communications interface, comprising the following steps carried out by said central transaction processing system (19):
receiving transaction data from an offering party, relating to a specific transaction to be authorized by a user, and receiving a first transaction reference (TRN) relating to and uniquely identifying said specific transaction, via a first data communication path (16), at said first data communications interface;
generating a second transaction reference (TRR) which is different to the first transaction reference (TRN) and which uniquely identifies the transaction within the central transaction processing system (19);
sending said second transaction reference (TRR) to the offering party; after receiving said transaction data, conducting communications over a second data communication path (22), different to said first data communication path, with said user over said second data communications interface;
using said second path, conducting a secure access procedure in which authentication data is received and said authentication data is verified;
using said second path, receiving said first transaction reference (TRN) relating to and uniquely identifying said specific transaction from said user, said transaction reference not being previously transmitted to said user in said second communication path (22);
using said second path, receiving confirmation from said user; and
in response to said confirmation, transmitting an authorization signal to authorize said transaction, said authorization signal including said second transaction reference (TRR), wherein said second transaction reference (TRR) is not known to said user.

Despite being applied to business applications, there is a technological effect of improved data security so the claimed invention is patentable.

GB 2171877

A method of making a telephone call from any available telephone, comprising: obtaining a special code by making a prepayment;
inserting the prepayment in a memory in a special exchange and being allocated to the special code in the memory for use in verifying a calling party call;
dialing the special exchange when a telephone call connection is desired;
inputting the special code for verification; inputting the number of called party;
verifying at the special exchange by checking the special code and comparing the prepayment less any deductions for previous calls in the memory with the minimum cost of a call to the called party station;
connecting the called and calling parties’ stations in response to said verification; monitoring the remaining prepayment less deductions for the running cost of the call;
and disconnecting the call when the remaining prepayment has been spent by the running cost of the call.

Despite being a business method, by virtue of the ‘special exchange’, there is a redeeming device and the invention is patentable.

GB 2418281

A method of creating a document having a displayable area on which information is placed, the method comprising:
a. providing a plurality of content-items which contain information that it is possible to display on the displayable area;
b. dividing the displayable area into a set of subareas each capable of receiving one or more of the content-items;
c. generating at least one set of proposed arrangements in which the content items have been arranged within the set of sub-areas;
d. selecting at least one of the proposed arrangements, according to predetermine criteria, as the layout of the content-items within the sub-areas of the displayable area to create the document; and
e. causing a printing means to print the created document.

This is considered simply automation of manual type-setting and is not considered as patentable.

US 2007033615

A method for transferring programs to a secondary storage device using an interactive television program guide implemented on user television equipment, to cause a first display: in a display screen of at least one program listing related to at least one program;
using the interactive television program guide to enable a user to select a program listing from at least one displayed program listing;
using the interactive television program guide to cause the program related to the selected program listing to be recorded on a digital storage device;
using the interactive television program guide to cause a second display in the display screen that includes at least one recorded program listing for at least one program recorded on the digital storage device, wherein at least one recorded program listing includes a recorded program listing for the program recorded on the digital storage device;
using the interactive television program guide to enable the user to select the recorded program listing to transfer the recorded program from the digital storage device to a secondary storage device; and
using the interactive television program guide to transfer the recorded program from the digital storage device to the secondary storage device.

This is considered as having a real world effect and is therefore patentable.

A method of monitoring, diagnosing and treating medical conditions of a plurality of remotely located patients using a central data processing system configured to communicate with and receive data from a plurality of respective patient monitoring systems, wherein each patient monitoring system is capable of receiving and storing patient data, the method comprising the steps of:
obtaining patient data from a plurality of patient monitoring systems at the central data processing system;
analyzing the obtained patient data from each respective patient monitoring system at the central data processing system to identify medical conditions of each respective patient;
displaying identified patient medical conditions for each respective patient in selectable, prioritized order according to medical severity; and
in response to selecting an identified medical condition for a respective patient, displaying treatment options for treating the medical condition.

This is considered as having a real world effect. Presumably the diagnosis – since methods of treatment are not statutory subject matter under Section 7(i).

WO 2010128511

A method for determining a matching score between a first set of H1 feature points, and a second set of n2 feature points, the method comprising the procedures of: producing a triple-wise affinity tensor, including the affinity score of assignments of triplets of feature points of said first set of feature points and triplets of feature points of said second set of feature points; determining a leading eigenvector of said triple-wise affinity tensor; iteratively producing a binary optimal assignment vector by discretization of said leading eigenvector; and determining a matching score between said first set of feature points and said second set of feature points according to said triple-wise affinity tensor and according to said optimal assignment vector.

As claimed, not patentable, since the invention relates to a mathematical abstraction. If image analysis and comparison using the method had been claimed, the result would have been different.

WO 2006082590

A method for adaptive filtering of at least one pixel having an initial value of an image composed of pixels, the method comprising: calculating local expected value for the pixel; calculating local signal to noise ratio; calculating local filtration ratio based at least on said local signal to noise ratio; calculating a weighted average of the initial value and local expected value using said local filtration ratio as weight; and assigning the weighted average as a new value for the pixel.

Since this is applied to at least one pixel, this is not an abstract algorithm, but rather an applied algorithm for image processing and is patentable. Furthermore, this cannot be simply considered as automation of something formerly done by hand since manually processing in this manner would not have been practicable.

WO 01/37131

A method of classifying an image, comprising the steps of segmenting the image into a plurality of regions and, for each of at least one of the regions: quantifying each of a plurality of visual properties of the region on a numeric scale for the property; comparing each quantified property with a plurality of bands of the numeric scale for the property, each band being associated with a computer-readable character; and arranging in a predetermined order the characters associated with the bands in which the quantified properties fall to form a region character string.

Can not be done manually and classification is considered a real world effect. Patentable.

WO 2005005004 

A method comprising the following steps to be performed electronically: selecting at least two participants from a plurality of participants; presenting a first image to each selected participant; and requesting each said selected participant to provide a description of said first image.

Although implemented by a computer, this is a manual process and is therefore not industrially applicable.

EP1184798

1.    A method of processing and presenting data, comprising the steps of:
(1) identifying claim dependencies of claims in a user-selected patent;
(2) constructing a patent claims hyperbolic tree for said user-selected patent using said identified claim dependencies; and
(3) displaying said patent claims hyperbolic tree. 

4.    A method of processing and presenting data, comprising the steps of:
(1) retrieving patent citation information pertaining to a user-selected patent, wherein said patent citation information is backward patent citation information or forward patent citation information;
(2) constructing a patent citation hyperbolic tree using said retrieved patent citation information; and
(3) emphasizing nodes of said patent citation hyperbolic tree according to time-based criteria, wherein said time-based criteria includes at least one of filing date, priority date, length of pendency, effective filing date, invention date, critical date, on-sale date, public disclosure date, and public use date.

Although computerized, could be performed manually by a data searcher, therefore not patentable. However, if linked to specific electronic processes, might be considered patentable.

EP 1618498

A method for managing a treelike data structure for text-to-phoneme mapping for automatic speech recognition or text-to-speech, which method comprises steps for creating a decision tree comprising a parent node and at least one leaf node, said method comprising also steps for searching data from said nodes, characterized in that the decision tree is created by storing the nodes sequentially in such a manner that nodes follow the parent node in storage order, wherein the nodes refining the context of the searchable data can be reached without a link from their parent node.

Unlike the previous example, by virtue of the highlighted section, the claimed software implemented invention is linked to specific hardware and is thus patentable.

COMMENTS

In general, I think the Commissioner has got this right.

It is a shame that the guidelines issued a year after they were promised.

Naomi Ragen, Israel’s best-selling writer was accused of plagiarism by three separate authors. She was vindicated by the Israel Supreme Court last week regarding her book The Ghost of Hanna Mendes and it’s alleged similarity to The Lion and the Cross. Ragen was, however, found guilty by Judge Yosef Shapira of the Jerusalem District Court concerning the similarity of some dialogue in her novel Sotah, to a book Growing With My Children: A Jewish Mother’s Diary by Sara Shapiro. Plagiarism is not a crime on the statute books. Ragen was found guilty of Copyright Infringement, Unjust Enrichment, Negligence and Theft.

The Case

Shapiro published a non-fiction, largely autobiographical work, called Growing With My Children: A Jewish Mother’s Diary which was published in 1990 by Targum Press. The book was a daily journal from the years 1986 to 1989, focusing on the author’s participation in an ongoing parenting workshop, and the ups and downs she experienced along the way to becoming a more skilled and patient parent.

There is one conversation, between the author and her mentor, Rabbi Simcha, that is closely paralleled by a conversation in Ragen’s  novel Sotah between the central character, Dina, and her husband, Yaakov. Furthermore, Shapiro takes on a secular home-help, Sonia, and Ragen’s protagonist gets exiled from her extreme ultra-orthodox community and sent to America to work as a home-help for a secular woman, Joan.

Ragen has argued that she had indeed read Shapiro’s book, and subconsciously may have used elements as inspiration for her novel. Simply groats for her mill. It is difficult to prove otherwise. The similarities are sufficient to raise questions, but there are differences as well. The dialogue is rewritten. It is not identical.

Ragen’s attorneys pointed out that the conversation attributed to Rabbi Simcha by Shapiro were not her creation and not her copyright. The authoress’ response in the dialogue are less insightful, less memorable and weaken the case of copyright infringement still further.

To find Ragen guilty, Judge Joseph Shapira performed legal gymnastics to have the case admitted at all, since there were strong grounds for dismissing the case altogether under the Statute of Limitations, as seven years had passed since Shapiro became aware of the similarity. He took the position that the ongoing sale of Ragen’s book made copyright infringement an actionable tort on an ongoing basis. Such a position makes some sense if Ragen was selling bootleg copies of Shapiro’s book, but that is not the case here.

Shapira’s opening paragraphs establishing the facts of the case refer to the Ragen as having copied sections of Shapiro’s book, indicating that he had prejudged the issue. He also relates to the Michal Tal case mentioned above, which he also heard. But this should have been inadmissible since it was not the case under trial. That said, since some witnesses were heard simultaneously in both cases, with consent of both parties, it may be considered admissible. That as may be, as noted above, Ragen was subsequently vindicated in the Tal case.

Where there is copyright infringement, there are no grounds to rule on grounds of Unjust Enrichment, which is applicable only where there is no statutory tort, such as in the A.Sh.I.R. case. Thus finding under both counts seems wrong. Finally, what’s theft? Since when is literary theft a separate tort?

Shapiro’s book is a non-fictional, somewhat autobiographical guide to making a marriage work, about adjusting oneself to one’s surroundings. Ragen’s story is about getting out of a situation that’s wrong, about taking control of one’s life. I think that a fair use defense is appropriate. Furthermore, to the extent that Ragen’s work was inspired by Shapiro’s I think that a satire defence is possible –  although difficult under Israel Law. We also note that Shapiro did not create the idea of employing a home- help. These have been employed by countless young mothers under stress. (I believe that my mother employed an au-pair when I was a baby. That wasn’t plagiarism either).

I accept that copyright covers all literary work, regardless of quality.  A couple of pages of dialogue may therefore by covered by copyright law. Nevertheless, the text in question is not memorable in its own right. We are not discussing a witty aphorism but simply a conversation. My main criticism of the ruling is that it places the bar for literary novelty simply too high. It is bad policy to consider copyright infringement in a case where two pages of dialogue in one book bear a similarity to a couple of pages of dialogue in a different book. This is counter-productive to the aim of copyright law which is to enrich by promoting creativity, not to stifle authors. Koheleth son of David (Ecclesiastes) was right on one level that there is nothing new under the sun.  The similarities between Shapiro’s book and Ragen’s novel warrant a footnote in a critical edition of Ragen’s book or an academic paper. Nothing more.

For those interested, the concept in Jewish Law (Halacha) analogous to fair use is “זה נהנה וזה לא חסר ”  lit. “this one benefits but that one does not lose out.” (T. B. Baba Kama 20:1 – 21:1, Shulhan Aruckh, Hoshen Mishpat Chap. 363: 1).

The plaintiff sued for NIS 1,000,000. Although the judgement finds Ragen guilty of copyright infringement, unjust enrichment negligence and theft, it does not award damages but gives the parties an opportunity to negotiate a settlement. It seems highly unlikely that the conversation in question helped Ragen sell books, or that Ragen’s novel adversely affected Ms Shapiro’s sales. Under the relevant copyright law which is the old 1922 Copyright Ordinance, not the new 2007 Copyright Law, the statutory damages are limited at NIS 10,000.  A fair settlement would seem, therefore to be loose change. Indeed, from a financial perspective it is difficult to see how any award that will stand legal scrutiny can possibly recover legal costs.  but what both sides are looking for seems to be moral vindication rather than damages.

The case: 9430/07 Sarah Shapiro vs. Naomi Ragen, by Judge Yosef Shapira, Jerusalem District Court 11 December 2011

Comments

The ruling is a 92 page whopper, which is why this took me a month to post.

Shapiro’s account in her own words was published in Cross-Currents, an ultra-orthodox discussion group here.

I first covered the Michal Tal case here. See also naomi-ragen-fights-back for details of all three plagiarism suits against Ragen, and Naomi Ragen Accused of Plagiarism – Again for details of a third case filed by Cynthia Rosengarten concerning the Sacrifice of Tamar.

An account of the Supreme Court Ruling concerning dismissal of the case brought by Michal Tal is to be found here: haAretz version and Jerusalem Post version. Ragen’s reporting is here.

For newspaper accounts of the District Court decision against Ragen see haaretz

Additional Comments

In Jephte’s Daughter, another novel by Ragen, the story relates to the daughter of a Rabbi growing up in New York. When I read it, I was reminded of Chaim Potok’s novel The Chosen. There was a scene where the girl and two of her friends experimented with make up in the girl’s bedroom. This reminded me of a scene in the 1980 hit movie Grease. I have no doubt that Ragen has read the Chosen and seen Grease. Whether these influenced her consciously or not, there is no case of copyright infringement or plagiarism.  (Note, I also believe that the Warner Bros character Bugs Bunny was inspired by Groucho Marx, although I’ve never seen any reference to this in print).

It is worth noting that the plagiarism cases against Ragen were filed around the time that Naomi Ragen challenged segregated seating on bus routes serving the ultra-Orthodox community by filing a suit to the Supreme Court on grounds of gender discrimination. A lot of the flack Ragen’s been under for alleged plagiarism seems to be driven by ultra-Orthodox opposition to the position she has taken on this issue which some see as threatening their life-style.  Many of her books are sympathetic to some aspects of the ultra-Orthodox lifestyle and critical of other aspects of the same. Some members of the Ultra-Orthodox do not take kindly to criticism, and may find her novels offensive.

Personally, I see social criticism as positive and believe that Ragen has raised issues that should be addressed. I think that every Jabotinsky was correct in his analysis published in “the War and the Jew”, that every nation needs its Jews; a visible, different looking population to hate. Unfortunately, in Israel, the Ultra Orthodox seem to fill this position for some secular Israelis. (The secular Israelis fulfill a need for the ultra-Orthodox that goyim fulfilled in Eastern Europe, so everyone benefits from the situation, but it keeps the Messiah from coming). However, Ragen has not written the sort of anti-ultra-Orthodox diatribe that the mainstream (secular) papers sometimes publish; where one can substitute the word black, ultra-Orthodox or Hareidi with the word Jew, Kike or Yid, and the piece looks like something that could have been published in Nazi Germany. Rather, Ragen has criticized anti-social behavior exhibited by some members of the ultra-Orthodox camp and cultural norms in some circles that she sees as having negative ramifications. She hasn’t attacked the population. In this regard, she is like Bruria admonishing her husband Rabbi Meir to pray for sin to be removed by sinners repenting, not for sinners to be removed (Talmud Babli Brakhot 11).

In my opinion, as outlined above, this ruling established the facts of the case, but gets the law wrong. I believe it should be reversed on appeal.

The Biblical Sotah from which Ragen plagiarized her title,  is discussed in Numbers 5: 11-31. She is a woman accused by her husband of having been inpregnated by another. In a trial by ordeal, the sotah drinks bitter waters, and, if guilty, swells up, and dies. If innocent, she and her husband are able to put this issue behind them and she is blessed with offspring.  Ragen may have been impregnated by exposure to Shapiro’s book, but her work is an original literary creation, and is admitted as such by Judge Shapiro. I believe that she deserves to be blessed with (literary) fruit for being wrongfully accused.

As with many such works however, it is strongly biased to mechanical type drafting. Software and physics are covered to some extent, but the focus is heavily on the predictable arts. The claim style is a little long-winded and pedantic for my taste. The focus is on USPTO requirements, but nevertheless, in my opinion, a chapter dedicated to the differences in US approach, from say, that of the EPO, would be a valuable addition.

The thrust is on drafting claims for obtaining patents. System, Method, product-by-process, Jepson, Markush and Beauregard  claim styles are discussed and illustrated, as are means+function, which are discouraged. Free Beer claims are not mentioned unfortunately. Nor are other claim styles disallowed in the US such as omnibus claims.  Since ultimately a patent might be litigated, there should perhaps be some discussion on claim construing in Marksman hearings and the need to make sure that terms cannot be misinterpreted.  Nevertheless, a useful guide for beginners.

• Paperback: 224 pages
• Publisher: Oxford University Press, USA (November 17, 2011)
• Language: English
• ISBN-10: 0199856354
• ISBN-13: 978-0199856350
• $125

There are many books that relate to claim drafting. Rules of Patent Drafting by Joseph Root is different in that it relates to drafting patent specifications, not merely the claims. Its premise is that when a patent is litigated, terms not mentioned in the claims but used in the specification may be read into the claims by the court during claim construction in the so-called Marksman Hearings, so it is important to carefully consider the specification as a whole when drafting applications, and not merely the claims. The book implicitly rejects the idea propagated by do-it-yourself patent guides, that the inventor can write his own application and simply have a patent agent or attorney draft the claims.

Instead of moaning about what the courts do to patent claim interpretation in Marksman hearings, the book suggests internalizing the court’s approach and reconsidering one’s patent drafting, and provides rules for so doing. In particular, the book suggests writing longer and more detailed disclosures, while taking care not to describe optional features as necessary ones, of course.

One interesting insight about the claims is that since an independent claim has to be construed as being broader than its dependencies, a purpose served by claiming seemingly trivial elements in dependent claims is not to provide a fall back position, but rather to prevent these elements being construed as essential to the invention.

The contents and insights are refreshingly different from the type of thing that seems to be rehashed in books aimed at beginners. Furthermore, the author, Joseph Root,  supports his contentions and illustrates his approach with reference to Federal Circuit Court of Appeal decisions.

Unlike most books on claim drafting that seem to focus on mechanical or electronic systems, the author relates to both the predictable and the unpredictable arts, and instead of simply saying that they are no longer popular, doesn’t shy from tackling means claiming in a thorough manner.

What is particularly refreshing though, is the style. The author emphasizes his points with similes and metaphors taken from an impressive range of books, films, and TV series. Despite thoroughly addressing weighty subject matter, the book is not a heavy read.

Yesterday, I had the privilege to attend a very well run and well constructed full day program dedicated to the America Invents Act. The highlight of the program, was, without a doubt, a lecture by Judge Randall Rader, the Head of the US Federal Circuit Court of Appeals.  Judge Rader is in the enviable position that his interpretation of the amendment to the patent law is likely to prevail when they are litigated. This is reason enough to hear him. Additionally, Rader is an accomplished speaker and his presentation was highly entertaining.

Rader started by wishing everyone a Good Year (Shana Tova) in heavily accented Hebrew, but then noted that it wasn’t actually the Jewish New Year at all. He went on to say all sorts of nice things to the appreciative audience, about Israel being heavyweight patent filer despite its small population, and that Israelis have a survivalist mentality that serves them well in the modern era of fierce global competition.

The main thrust of Rader’s presentation focused on what he saw as being the central issue of the America Invents Act; that America becomes a first-to-file regime, abandoning their anomalous first-to-invent system, thereby coming into line with the rest of the world. However, Rader noted with satisfaction, that the grace-period has been retained. In his opinion, this protects inventors from killing their patenting chances by first publishing or demonstrating their innovations. Rader expressed his hope that now that the US had made a massive move towards Europe in adopting the first to file regime, that perhaps Europe should reciprocate by also adopting a grace period.

Rader invited questions from the audience, and it seemed that many of those present were less than convinced that the judge was correct that the amended law reduced uncertainty and really promoted greater similarity between countries. I pointed out that as far as both novelty and inventive step (obviousness) are concerned, there was still significant differences. My good friend Larry Rublin made a short and succinct observation that made it apparent that he was proficient at defining systems, as would be expected from a patent attorney. In contrast to most of the audience, Larry’s mentor, Heidi Brun, went on record to the effect that she believed that the grace-period was positive, since it gave something to tell the inventor who had already exhibited.

I found myself realizing that my preference for first-to-file was that it provided certainty based on simple to establish facts.  Judge Rader apparently believes that patent protection is a reward for inventing and contributing to knowledge, and so the uncertainty that prior publication brings should be allowed, despite it somewhat complicating the system. I suspect that Heidi’s position reflected both her personal empathy with the inventors and also the patent attorney’s (self) interest to enable clients to protect their IP. Another reflection that came to me whilst listening to Judge Rader, was how unfortunate it is that Israel does not have dedicated IP judges. The final thought, seeing Rader’s stars and stripes necktie, and the green with white polka dot thing wore by sponsoring attorney Colb, was that there is apparently a correlation between the eminence of the speaker, and the ridiculousness of the tie.

The pastries served during the coffee break were freshly baked and delicious, and there was a selection of both tea and herbal infusions. Disappointingly, the coffee was either instant or botz (hot water poured over ground coffee).  Nevertheless, the speakers were sufficiently interesting that quality caffeine wasn’t necessary to stay awake.

Judge Rader was followed by a light-hearted but thought provoking presentation by Dr Dan Goldstein and Benjamin Fishman, both senior patent attorneys at Colb, each wearing formal business suits and fairly conservative ties. They proposed a number of reasonable scenarios and amply demonstrated that the law, as legislated, left a lot of uncertainly, and presumably the courts will have their work cut out over the next few years. Judge Rader was teased a little in the presentation, but he took it well, and showed his sharp legal mind  in one of his responses, by succinctly distinguishing between the aspects of the scenario presented that were a consequence of the new legislation, and the aspects that were equally problematic under the old law, or simply due to the complications of plausible, if convoluted, scenarios.

After lunch, comprising filled rolls and an orange vegetable soup, the program continued with sessions compered by Dr Yoav Mazeh and Dr Ofer Tur-Sinai, young lecturers at ONO Academic College, showing a nice collaboration between the two closely situated law faculties.

Colb himself spoke about the statistics of reexamination and came to the conclusion that after investing large sums of money, most clients obtain a patent that if they tried to enforce, would be invalidated or at least considerably narrowed, and suggested that attorneys should tell their clients.

Dr Ofer Tur-Sinai chaired the final session. David Zviel, Patent Counsel of NDS, spoke about the ethical conflicts faced by in-house counsel. David argued that the pressure resulting from dealing with ethical dilemmas faced by pin-house counsel were greater than those faced by attorneys working for patent firms. Unfortunately, for obvious reasons, he didn’t illustrate this assertion with concrete examples.

Professor Orli Lobel cut an impressively elegant figure in a well tailored jacket, and stylish designer jeans. For some reason she postulated that it was easier for a large corporation to make a decision and to pursue a policy than it was for an independent inventor. She backed up her position with some empirical evidence culled from the effect of the reform to the Canadian patent law that was in some ways similar to the American Invents Act. Her presentation was followed by one by Suzanne Erez, in-house IP counsel for IBM Israel, who wore a more homely knitted dress and flat shoes, and who walked around a lot whilst presenting. It was not clear whether she was gently poking fun at the earlier and mre formal speakers, or if Suzanne simply and justifiably felt at home with the audience of her peers, and felt no need to dress to impress. She focused on key issues that the act could and should have related to. All the presenters significantly contributed to the program and even without Judge Rader’s keynote presentation, the day would have been informative and worthwhile.

The event attracted about 100 people, and for Judge Rader’s presentation, the lecture hall was packed,  with people standing in the aisles.

This was the fourth such annual event hosted by Bar Ilan University and co-sponsored by the Jerusalem College of Technology and S. T. Colb Patent Attorneys. Although the food served at last year’s conference, held at the Tel Aviv Hilton was of a higher quality,  in my opinion that program, featuring attorneys from Fish Richardson was a little too commercially oriented for academic institutions like Bar Ilan and JCT to be identified with, despite being of a high standard.

It was certainly a better program than that offered the year before where the Bar Ilan – Colb collaboration examined the future of business method patents  after Bilski, despite pre-empting the decision it was supposed to analyze. It also featured too many academics having little knowledge of real patent issues.

In summary, this year’s program was informative, topical, well organized, well attended and thoroughly enjoyable. I congratulate all the speakers, and thank Professor Bitton, Seth Heller and Sanford Colb for organizing the event. We note with pleasure that Professor Arieh Reich, the Dean of the Bar Ilan Law Faculty announced that this January IP event would continue to be held annually.

The marks cover: Entertainment and culture activities including live entertainment and musical entertainment; nightclubs, sport clubs, providing recreational facilities; arranging and conducting of functions, conferences, conventions, exhibitions, seminars and meetings; theatre, opera, concert, ticket reservations; all included in class 41, and
Rental of temporary accommodation; reservation; hotel, motel, bar, cafe, restaurant, banqueting and catering services; rental of rooms for holding functions, conferences, conventions, exhibitions, seminars and meetings in class 43.

Ganor opposed these registrations, since the marks were confusingly similar to mark number 136149 (Alma Beach) that she owned.

The two sides came to a co-existence arrangement under which MusicArt would have rights to the wordmark Alma in the North of Israel, North of Caesaria, whereas MS Ganor would have rights to the Alma Beach mark as illustrated, South of Caesaria. However, withdrawal of the opposition was conditional on the coexistence agreement being accepted by the Patent and Trademark Authority.

 Ms Yaara Shoshani Caspi, the adjudicator of intellectual property in the Israel Patent and Trademark Authority refused to accept the coexistence agreement. Since the word marks were distinguishable from the graphic image, she was prepared to allow the registration of the marks, and the opposition to continue.

Her position is that although two parties can decide to coexist, the Trademark Office is obliged to consider other issues, such as protecting the public from confusion. Geographical limitations are particularly problematic bearing in mind the small dimensions of the country.

The parties have been given 20 days to inform the Israel Patent & Trademark Authority how they wish to continue.

The organization L’tet - Humanitarian Aid In Israel, (ארגון לתת) filed an opposition to the mark, but after the applicant, represented by well-known attorney, Dr Yaakov Weinrot, his statement of case with a request for costs, L’tet withdrew their opposition, stating that although they believe the opposition was legally justified, they did not think it was correct use of public funds.

The Commissioner for Patents and Trademarks, Dr Assa Kling, accepted that both the applicant and the opposer did important humanitarian work, but felt that it was more appropriate for such organizations to find other ways to settle their differences than to fight opposition proceedings and generate legal costs. Nevertheless, he could not deny the parties’ right to fight through  the system.

Commissioner Kling ruled that in principle, the applicant was entitled to recover legal costs, but the awarding of such was discretionary on the Patent and Trademark Authority. No details of actual costs incurred were given, and generally actual costs are rarely given, but rather an estimate of fair costs. In light of the circumstances and the fairly early stage at which the dispute was terminated, he decided to use his discretion and not award costs at all.

COMMENT

This is, unfortunately, not the first time (and probably not the last time either) that two humanitarian organizations have been involved in trademark disputes.

Unlike the case of Johnson & Johnson vs. the American Red Cross, regarding the continued use of the red cross symbol by the ambulance service, this case has some merit, in that charities should choose distinguishable names so that donors are not confused who they are supporting.

There are a number of cases where different charities have confusingly similar names. Then again, “to give” is rather generic, and one wonders why anyone should have rights to a word like that for philanthropic purposes.

I can understand the Commissioner’s position regarding philanthropic organizations wasting public money on legal fees. It is, however, a moral – ethical position, not a legal one. From a purely legal standpoint, one wonders if it would not have been appropriate to have awarded the usual costs awarded to an applicant for a trademark, where the opposition is dropped after the applicant files his statement of case. Commissioner Kling is well within the scope of his discretion, and value based judgements have been in vogue since Former Chief Justice Aharon Barak abandoned formalism and instigated more value-centric judgements.

Although I have no strong feelings regarding this decision not to award costs, personally, I am a formalist who prefers the “law is an ass” approach to Law. I note that judges and commissioners are not democratically elected, and often the reasons and methods of selection for such judicial personnel are somewhat murkily concealed.  In such a system, I would prefer judges and commissioners to judge and to award costs in a manner that neither favours plaintiff nor defendant and which is actually neutral to the type of goods or service that a trademark applicant provides. 

I note that we do not know if the Attorneys were actually charging for their time or if they were working pro bono. If one organization that helps the needy opposes a mark filed by another organization, is it wrong that the losing organization should transfer funds to the organization that wins?

Working in the field of intellectual property – as in many other disciplines – is dynamic. Partnerships and alliances have a beginning and an end.

After 3½ years of working together, Jeremy Ben-David and I have decided to end our partnership on December 31, 2011. We have both decided to pursue different directions within the IP field.

This is an amicable parting of the ways based on mutual respect.

Jeremy Ben-David will continue in the existing Jerusalem premises, as JMB Davis Ben-David – Patents, Designs & Trademarks. He may be contacted here: jmb@israel-patents.co.il

I will provide full details of my plans in January, but in the meantime, can be reached at mfactor@ipfactor.co.il

Wishing all clients, associates and blog followers a Successful 2012!

Michael

Bar Ilan university are hosting a full day conference on 4 January 2012 to debate the ramifications of the changes in the US Patent Law wrought by the America Invents Act.

To register, or to receive more details, please contact Dr Miriam Bitton:   miriam.bitton@mail.biu.ac.il

The event is sponsored by S.T. Colb and will be held in the Wohl Center, Hall 1 of the Bar Ilan Campus.

The program hasn’t been released yet, but apparently Judge Randall Rader the Chief Judge of the United States Court of Appeals for the Federal Circuit will be lecturing, so regardless of who else is presenting, the event will be worth attending.

COMMENTS

Two years ago, the dynamic Bitton-Colb duo gave us a conference titled, After Re Bilski Now What? which unfortunately took place several months before the Bilski decision was heard by the Supreme Court.  See  here. That conference, spread over two days, was characterized by a lot of vacuous waffle and prophecies that never materialized. We therefore applaud the decision to concentrate on recent historical (and perhaps historic) amendments to the US Law.

In January last year, S.T. Colb teamed up with Fish Richardson and held an event on patent litigation in the US. That event was again cosponsored, at least officially, by Bar Ilan.  For more details, see here.

We suspect that the refreshments at Bar Ilan will be less of a high standard, but lower than the fayre at the Hilton. Looking forwards.