Israel Patent Office Requests Submissions Regarding Patentable Subject Matter

September 12, 2014

 

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

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

Section 3 of the Israel Patent Law states:

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

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

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

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

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

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

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

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

My best attempt to translate this is as follows:

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

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

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

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

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

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

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

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

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

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

COMMENTS

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

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

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

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

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

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

 


The Ethics of Outsourcing

September 12, 2014

The IP Ethics and Insights blog covers some interesting issues.

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

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

Anyone have any thoughts?


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.


Sakare and Sacara Competing Marks

September 11, 2014

Sakare boxes    Sakare shops   Sacara products    Sacara

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

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

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

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

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

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

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

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

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

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

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

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

COMMENT

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

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


Job Vacancy for Trainee Examiners in Israel Patent Office

September 10, 2014

Israel patent office logo

The Israel Patent Office is looking to recruit a couple of trainee examiners. Suitable candidates must have a relevant scientific or engineering degree, must be fluent in Hebrew and must be able to cope with English language technical literature.

Patent experience is useful but not essential.  For more details, see here.


Adding Evidence in a Patent Opposition Procedure

September 10, 2014

glass transition temperature late entries

DSM IP Assets LTD filed Israel Patent Application No. 168200 for “Process for the Manufacture of a Ballistic-Resistant Moulded Article”. PMS Migun LTD opposed the patent issuing.

On 4th and 6th February 2014, a hearing was held at the Israel Patent Office and then, on 19 May 2014, the parties filed a joint request to amend the protocol. In addition, on the same day, the Applicant requested permission to add a further piece of evidence.

The additional evidence related to the witness statements for both sides concerning the glass transition temperature of the matrix material Witcobond 737 which were already on file. It appears that following the hearing, the Applicant had done some research into the glass transition temperature and wished to submit this now, at the summation stage of the proceedings.

The request to add new evidence generated a spew of claims and counter claims and requests to admit statements into the record and to deny the opposing party from adding new material.

Arbitrator’s Ruling

Regulation 63 states that neither party can submit additional evidence without the Commissioner’s authorization. The courts and the Patent Office have ruled that evidence should be submitted at the correct junctures. When the arbitrator is presented with new evidence, her responsibility is to weigh up its importance in clarifying the outstanding issues, where the proceeding is up to and whether the party could have submitted the evidence earlier.

In the specific instance, the issue (according to MS Shoshani Caspi) is whether the party could and should have submitted the glass transition temperature of the Witcobond matrix during the evidence stage and how important this is anyway. Since the application does not relate to the glass transition temperature or indeed to the Witcobond matrix, the evidence was considered unnecessary to ensure a fair ruling. Ms Shoshani Caspi considers the disagreement between the parties concerning this issue as not relevant to the patentability of the invention as claimed. In this regard, she gave weight to statements from the patentee that the evidence was submitted out of concern to provide a full picture and not to create a lacuna in the evidence, whilst the opposer considered this a litigator’s trick to distract from the real issue. She was not convinced that the evidence was critical.

The Adjudicator of IP, Ms Yaara Shoshani Caspi who heard the case refused to allow the evidence to be submitted and awarded costs of 4000 Shekels against the Applicant. The Opposer was given 60 days to submit their summary, not to exceed 45 pages.

COMMENT

Funnily enough, in an earlier intermediate ruling, the Opposer was not allowed to submit evidence that was not referenced in the statement of case.

When submitting additional evidence, the guiding principle should be whether or not this affects the patentability of the invention. If as a result of the hearing, the patentee does additional laboratory work or literature searches to respond to a point raised, or, as in this case, checks things up with the R&D staff, I believe the party should be allowed to submit it. A patent should not be refused on procedural grounds. The opposing party can be awarded costs for any inconvenience. What is not allowed is to simply present evidence at late stages as a delaying tactic. This is something that opposers have an invested interest to do, since a patent under opposition cannot be enforced until the opposition is dismissed. The applicant has no advantage in delaying tactics and so it seems clear that the additional evidence wasn’t there earlier.
Preferring to relate to substantive issues affecting patentability rather than procedural issues regarding when material can be submitted appears to be the position of the court is clear from an Appeal against the Patent Office and Ms Shoshani Caspi to the Courts in an earlier opposition ruling between the same parties.  An ironic problem is that the present intermediate decision by Shoshani-Caspi issued on the 3 August 2014 and the court’s decision on appeal in the other case issued on the 18 August 2014. In the circumstances it might have been wise for the patent office to recall and correct the decision rather than publish it. We suspect that the patentee will appeal if, as a result of this new evidence not being considered, the patent is cancelled. No doubt the Opposer will then want the additional evidence that wasn’t allowed to be submitted to be considered.

Interestingly, the entire discussion, including the protocol of the hearing and the evidence is in the file wrapper which is available on the patent office website. As a materials scientist with both theoretical and lab experience in composite materials – I started a PhD in Applied Chemistry at Casali Hebrew University in polymer matrix composites, before eventually joining a coatings project managed by the propulsion physics laboratory of Soreq – NRC and doing a PhD in Applied Physics at the same institution – and having a client who is busy patenting anti-ballistic materials, it is tempting to discuss the evidence and the patentability of the claimed invention. As it is sub juris, I don’t think that would be appropriate.

As to submitting a 45 page summary, it is an art to cut down the volume of material without throwing something important out. This was something we practiced in High School in England. Patent Attorneys do it for PCT abstracts, and when I had columns in various IP magazines such as AIM, WIPR and MIP, I got quite competent at cutting down blog articles to a fixed number of words. We think that 45 pages is more than enough wordage to summarize the case, and to keep the Adjudicator focused on the real issues, the summation should be kept short and focused.


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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