Calculation of costs re Israel Trademark Number 242574 for “OSIS”

October 19, 2014

OSIS

AG & Co. KGaA applied for Israel Trademark Number 242574 for “OSIS”

The mark was applied for perfumery goods, essential oils, cosmetics, preparations for treating, washing, dyeing, bleaching, styling and perming hair, soaps in Class 3, and for mechanical implements for body and beauty care (included in this class), sponges, brushes (except paint brushes), apparatus and receptacles for applying hair dyes in class 21.

Ein Gedi Cosmetics opposed the registration.  After several extensions, Henkel abandoned the mark. On 13 July 2014 Ein Gedi requested costs of 12,000 Shekels. On 18 August 2014, Henkel responded to the request for costs.

The Adjudicator of IP issues, Ms Shoshani-Caspi, accepted that in general, the party prevailing in a proceeding is entitled to costs. In this instance, the Applicant did not detail his requests for costs which therefore have to be considered as an estimate only.

In Bagatz 891/05 Tnuva vs. Department of Industry it is stated that to obtain real costs, the applicant should detail the basis of calculating legal fees, the amount of work, and whether it was actually paid. After this is done, the opposing party should explain why the requested costs are inappropriate.

furthermore, Section 69 of the Trademark Ordinance gives the Commissioner (or whoever rules on the case on his behalf) discretion to award costs considered realistic.

In this case, since there was no basis to award actual costs, the adjudicator considered the complexity of the case, the amount of work, the professionalism of the parties, equitable behavior of the parties and with reference to Regulation 46 of the Trademark Regulations 1940, whether the case could be avoided were the Opposer to provide the applicant with sufficient notice.

Apparently the Opposer had not contacted the Applicant before filing the Opposition, but the Applicant had filed three extensions, indicating that they were originally considering and intending to respond. This was not considered as sufficient indication of inequitable behavior though.

Taking into account the amount of work done and that the opposer had to request costs,the Arbitrator of intellectual Property Ms Shoshani-Caspi ruled costs of 3000 Shekels including VAT.

Ein Gedi vs. Henkel re Israel Trademark Number 242574, ruling on costs by Ms Yaara Shoshani -, 17 September 2014

 


Lapsed patent for elevator safety reinstated

October 17, 2014

elevator rules

Israel Patent Number 216841 to Yoram Madar titled “Elevator protection against short-circuit of safety devices” was granted on 1 March 2013. Under Section 56 of the Israel Patent Law, the patentee should have paid the first renewal within three months, and failing to do within the following six months lead to the patent lapsing as of 1 June 2013, with a notice of abandonment publishing in the January 2014 Israel Patent Office Journal.

In a request for reinstatement dated 22 September 2014, and with a declaration and appropriate evidence, Medad alleged that the renewal was paid on 13 March 2013. Furthermore, he claims to have sent the receipt of payment to the patent office but there is no evidence that this is indeed the case as there was no covering letter or receipt from the patent office that was stamped received.

Madar claimed that he never wanted the case to lapse and that he discovered the problem when requesting a priority document for a national phase entry into the US.

In the circumstances, the conditions of Section 60 were considered to have been fulfilled and the Deputy Commissioner allowed the case to be restored subject to publication of the decision and no oppositions being filed.


Matrix fun and games

October 17, 2014

matrix games

Israel Trademark Number 247341 for the word-mark Matrix covers Tablet PC, electronic frames and digital cameras; all included in class 9. It was filed by a private individual called David Alon.

The mark was allowed and on publishing for Opposition purposes, Iscar (an Israeli company that is a major manufacturer of cemented carbide cutting tools) filed an opposition.

Iscar requested that Alon file 100,000 Shekels bond to cover costs in the event that he fails to win the opposition. Furthermore, until a ruling issues on the bond issue, the opposition should be considered as in suspense, and finally, due to a response from the applicant on 17 August 2014, the application to file the trademark should be considered as voided.

It turns out that Alon is handling a bankruptcy proceedings and he agreed to suspend the opposition proceedings until he can come to an understanding with his creditors in the bankruptcy hearing scheduled in December 2014.

At this stage of the proceedings, Iscar have until 24 October 2014 to file their evidence.

REGARDING THE BOND

Regulation 519a enables someone sued to request that the plaintiff post a bond. In this instance Iscar is opposing Alon’s registration and so the regulation does not apply. Furthermore, in the current instance, even were Alon the plaintiff, the Adjudicator of Intellectual Propoerty, Ms Shoshani Caspi , does not consider that the circumstances justify requiring a bond. A private individual (as opposed to a limited company) is generally not required to post bond merely because of poverty, because this would limit his right of access to the courts.

Forcing Alon to post a bond would effectively close the proceedings (probably the point), and should only be allowed if he has no chance of succeeding on the merits. The request was refused.

REGARDING THE REQUEST TO CONSIDER THE TRADEMARK WITHDRAWN

The case for withdrawing the mark is that Iscar considers it confusingly similar to their mark 195919 also in Class 9.

Iscar’s mark covers Automatic machine tools and accessories; vending machines; computer hardware and software used to control machine tools and accessories use, supply, purchase and inventory for the manufacturing industry; all included in class 9, and is shown here:

Matrix

Iscar claims that Alon’s mark is confusingly similar as their earlier mark and is in the same class. They consider that Alon should have informed the Patent Office that he was bankrupt and being in the status should refrain from legal actions. Forcing him to withdraw the applicant was preferable than an opposition proceeding.

Ms Shoshani Caspi, the arbitrator assigned to the case ruled that she could not decide to have the mark thrown out in a preliminary action without hearing arguments from both sides. It was premature to accept that the marks were confusingly similar and that Alon’s mark should not be allowed. The fact that he was bankrupt was not sufficient justification to prevent him from trying to defend his rights before the Israel Patent and Trademark Office. She therefore rejected having the application simply thrown out.

In conclusion, Ms Shoshani Caspi gave Alon until 31 December 2014 to submit the ruling of the Tel Aviv District Court regarding the bankruptcy, to decide on the application and the opposition and suspended the proceedings until then. Following the District Court’s ruling, she would decide on a timetable for filing evidence. Finally she decided that both sides should cover their own costs.

Preliminary Motions regarding Opposition to Israel Trademark Number 247341, Iscar vs. David Alon ruling by Ms Shoshani Caspi, 22 September 2014.

COMMENTS

Iscar makes metal matrix cutting tools. The term matrix has a plethora of meanings in different contexts but does not mean anything particular with regards to tablets, electronic frames and digital cameras. I don’t see that Iscar has a very strong case in opposing this. There is probably room for coexistence of the two marks. In the circumstances, they could probably buy the mark from Alon for less than the cost of opposing it, which they would be unlikely to recover anyway.


Patent Office Journal Corrected, but Correction published for Opposition Purposes

October 17, 2014

correction

Israel Patent Number 199837 titled “DIRECT EXCHANGE GEOTHERMAL HEATING/COOLING SYSTEM” to Earth to Air Systems LLC is a National Phase Entry of A PCT application dated 18 January 2008 and the second renewal, covering years 6-10 thus fell due on 18 January 2014, which, being a Shabbat, was deferred to 19 January 2014.

The renewal was handled by a renewal company, and, due to an administration error, the renewal payment and a covering letter were only sent to the Israel Patent Office on 20 January 2014, i.e. one day late. The renewal was received but, due to the missing extension fee, the patent office database was updated, however, proof of payment was published in the electronic file accessible via the patent office database. The patent office should have informed the applicant about the wrong payment but apparently this did not occur.

Six months later, the patent lapsed and the fact that it has lapsed is supposed to publish in September 2014 journal. In August 2014 the fact that the patent had lapsed already appeared in the on-line database of the patent in the patent office.

The Applicant for restoration argues that the patent lapsed due to a patent office mistake and that the patent office should have accepted the payment as of the date it was paid, even if there was an outstanding extension fee to be paid and therefore the patent office should reinstate the patent retroactively rather than requiring it to publish for restoration purposes. (similarly, presumably the fees should reflect the mistake and only the one month’s extension fee should be payable and not the request for reinstatement, etc. – MF).

The Deputy Commissioner, Ms Bracha, ruled that under Section 170 of the Law she could correct the journal. The patent was not renewed in a timely manner due to a mistake of the patent office. The renewal payment reached the patent office but the databases were not updated and the patentee was not informed that there was an outstanding extension fee due. In addition to Section 170, Ms Bracha related to Y Zamir “Civil Authorization,” Vol. 2 page 1991 (1996).

Although the fact that the patent had lapsed was published a month earlier in the patent office database, Ms Bracha did not think that the public had relied on the patent having lapsed and it is reasonable to simply correct the database. So, instead of publishing that the patent has lapsed in the September journal, the patent office was publish the correction to the record in the journal, allowing the public to oppose the decision.

Ms Bracha went on to note that the result is the same, in that the public can oppose the decision, and if the applicant had requested reinstatement under Section 60 of the Law instead of correction of the record under section 170, in the circumstances the reinstatement would have been accepted, but the decision would publish for opposition purposes.

As a footnote, Ms Bracha rejected the patentees contention that the renewal should have been allowed despite the missing fee. The Deputy Commissioner sees Section 57 of the Law differently  from the agent of the applicant (Luzzatto et Luzzatto).

Section 57 reads as follows:

“if the renewal fee is not timely paid, it may be paid within six months together with the appropriate extension fee and after having done so, it will be considered as if it was paid in a timely manner under Section 56 and the patent will be considered as not having lapsed.

The underlined section is the basis of the Deputy Commissioner’s reasoning that for a late renewal to be considered as timely paid, the relevant extension fee has to be paid. The Applicant cited Regulation 6 of the patent regulations 1968 to the effect that:

The patent office won’t do anything requiring a fee until the fee is paid, but failure to pay all or some of the fee won’t cancel the application, process or registration unless specifically legislated differently.

Ms Bracha does not consider this regulation as being able to contradict the main legislation. furthermore, the regulation itself notes that it is only effective in cases “unless specifically legislated differently”. Either way, section 56 and 57 trump this.

The record is corrected and the correction is published, allowing the public to object to the correction.


Another patent restoration decision

October 17, 2014

Israel Patent Number 158968 to Ofer Dagan is titled “Solar water heater”. The application was filed on 20 November 2003 and the third renewal, covering years 10-14 should therefore have been paid by 20 November 2013, and with extension fees, by 20 May 2014. Applicant failed to pay these fees and the patent lapsed, with a notice of the patent lapsing being publishing in the July 2014 Journal.

The patentee signed a deal with a Cyprus based company that was supposed, inter alia, to maintain the patent. On 17 November 2013, the Cypriot company paid the fee for a filing a new patent application instead of the third renewal fee. Proof of payment, designating the patent number was appended to the request for reinstatement.

The Cypriot company turned to an Israeli company to maintain the patent and discovered the mistake. In the circumstances, the Deputy Commissioner Ms Jacqueline Bracha ruled that the circumstances fell within the ambit of section 60 of the Israel Patent Law, the difference in fees should be paid and the patent should be reinstated.

 


Israel Patent revived over seven years after it lapsed

October 16, 2014

carry on screaming   living dead

Israel Patent Number 139892 “INNER WORKINGS FOR A WATER TREATMENT UNIT” to Yigal Tsabri was allowed on 11 July 2006, but the first renewal was never paid. Consequently as of 11 April 2007, the end of the six month grace period, it was considered as having lapsed as of 11 October 2006, and in the May 2007 a notice of the patent having lapsed published.

A mere seven years later on 21 May 2015, Yigal Tsabri, the patentee requested the patent be restored. In the request he detailed that around the time the patent issued his financial situation deteriorated and the connection between him and his agent of record was broken. The agent of record did not inform him of the requirement to pay the renewal fee and instead, opened a file with the government collection agency (Hozlap). On 19 December 2011 a bankruptcy order issued but the receiver had agreed to allow attempts to restore the patent.

On 25 May 2014 the Deputy Commissioner noted the long time that had passed and expressed concern that the case could not be considered reasonable. Although the applicant had described difficult circumstances he had not presented any evidence of having done anything to keep the patent alive. The applicant for restoration had not detailed when he learned that the patent had lapsed and why he’d needed a District Court authorization to file a request for restoration.

In the circumstances the Deputy Commissioner gave the Applicant an opportunity to appear before her on 22 June 2014. During this hearing it transpired that the lapsed patent was a source of income as it was being licensed! – this despite the fact the license was not registered with the Patent Office, the patent had lapsed as of October 2006 and apparently the licensee was unaware that the patent had lapsed! The income from the patent license was being used to pay off the bankruptcy debts.

The patentee declared that he’d learned about the patent lapsing about eight months prior to the request for restoration being filed. As soon as he’d learned of it lapsing he’d turned to the manager of the bankrupt estate (presumably the receiver – MF) and had got District Court Authorization to file the request for restoration as the fee for so doing came out of the bankruptcy estate.

The Applicant provided reasons from May 2006 until today, for not having been able to clarify the status of the patent which provides grounds for leniency, despite the patent being to some extent abandoned. These reasons were not published in the decision as they are of a personal nature.

The Court had apparently provided a public defender to represent the patentee, but he had failed to show up for the hearing so the patentee had represented himself.

The Deputy Commissioner ruled that the patent could be restored on payment of the various fees, but this decision publishes for opposition purposes. As the patentee is not represented, the decision is sent to him directly and also to the public attorney’s office.

Decision re restoration of 139892 to Yigal Tsabri. Ruling by Deputy Commissioner Ms Jacqueline Bracha, 9 September 2014.

COMMENTS

It does seem nice that a week and a half before Rosh Hashana, the Deputy Commissioner is showing clemency לפני משורת הדין.

However, 6 years is indeed a long time. It appears from the decision that the receiver had authorized the reinstatement back in 19 December 2011. From a first reading I assumed that this is one of the things that Ms Bracha wanted clarifying and is not actually the case. It also appears as if the patent attorneys had instituted the bankruptcy proceedings. Whilst this is certainly their right, I would be surprised if this is indeed the case. I also find it difficult to imagine that the agent of record didn’t forward the certificate. It seems more likely that they would warn regarding the first renewal and request all bills settled first.

The requirement for clarifying whether or not a patent is in force is to enter the Israel Patent Office website. The details are on line. The staff at the patent office are also fairly helpful over the phone. Indeed, if someone had come in to my office off the street wanting to know if a patent was in force, I would have told them , and suspect that this is true of many other patent offices.

The licensee has been paying money without minimal due diligence to check if there is a patent that is in force. This is surprising but not unbelievable.

Clients are odd things. I had a client who drafted his own application by copying someone else’s issued patent which he cited in the background. The basis of his claim to a patent was that he’d made the device smaller. Not surprisingly, the prior art was cited against him and that was when he came to me. I actually managed to make fairly drastic rewrites based on the figures and to obtain a patent. That inventor made the conscious decision to not to bother paying the first renewal fee since he was licensing the patent anyway!

I also had a Russian inventor who came to me with a portfolio of six patent applications, three of which had lapsed. He’d drafted the applications himself, and I suspect he’d written them in Russian and used a computer to translate the specification. I am always happy to take on a challenge, and managed to restore two of the cases that had lapsed within less than 12 months. I extensively rewrote the specifications without adding new material and got five of the six cases to issue. The earliest application had lapsed over three years earlier and I was unable to revive it, despite the applicant providing some evidence of periodic hospitalization and problems with a previous agent of record. He was unable to adequately demonstrate to the satisfaction of the Deputy Commissioner that he’d taken action promptly on first learning that the patent had lapsed, since I was taken on over a year later. It was a shame, since the patent was for a significant invention. The client wanted to appeal to the Courts, but did not instruct me on time. The Deputy Commissioner’s main concern was that third parties could have learned of the first application from a corresponding US case (published and allowed, however the issue fees were never paid). The rights of such third parties practicing the invention would have been compromised if the patent application was reinstated. I had actually tried to preempt this by offering an unconditional free license to any such third parties in the request for reinstatement itself. In the ruling refusing to all reinstatement, the issue of prejudicing unknown third parties and the need to strike a balance between the applicant’s rights and theirs was extensively discussed. My suggestion of an unconditional license wasn’t. Thisraised grounds for an Appeal to the Court, but the client didn’t instruct me on time and didn’t pay the fees. The main difference between that case and this is (a) that the Russian case was a lapsed application and this is a lapsed patent, and (b) specific health issues of each inventor, where the details of this case have not published. I jumped through all the legal hoops and related to every precedent to no avail. Presumably the patentee in this case did not, as he was unrepresented. What is interesting however, is that in the present case there is clearly a third-party who has not needed to pay licensing fees and was being defrauded, albeit possibly unintentionally. Now, by reinstating the patent, this actual and real licensee will have to continue paying fees hereinafter, possibly until November 2000. Go figure.

This ruling will publish for appeal purposes. The law granting the patent office discretion to revive long dead patents is clear. The question is whether the discretion was used wisely and whether the serious of events described by the patentee to justify the revival were true. We do not know what they are. The decision as published is heavily censored to protect the patentee’s privacy. Unless third parties can access the details, how can they challenge them? Can the former agents of record produce evidence against their ex-client who apparently did not settle his bills, to show that he did receive details of the deadline for renewal? Would this be a considered unethical? What about the hapless licensee who has being paying royalties to use a lapsed patent? It is unlikely that someone not involved would oppose a case with virtually no chance of recovering costs as the patentee is apparently bankrupt.


Claim Reconstruction – Israel style

October 14, 2014

One of the problems with the written word is that word and phrase may have slight ambiguities in meaning that are clarified by context and be dictionary definitions.

The’ metes and bounds’, i.e. the perimeter of the monopoly of a patent is defined by the claims. In the US, virtually every patent infringement proceeding includes a preliminary Marksman hearing where the parties argue as to how the claims should be construed. Once the scope of the patent is determined, the parties can argue about whether an allegedly infringing product or method actually infringes and appropriate damages.

Janssen

Israel Patent Application No. 181650 to Janssen Pharmaceutica titled “SOLID PHARMACEUTICAL COMPOSITION COMPRISING A PHARMACEUTICALLY ACCEPTABLE CARRIER AND HYDROCHLORIDE OF 4-[[4-[[4-(2-CYANOETHENYL)-2,6-DIMETHYLPHENYL]AMINO]-2-PYRIMIDINYL]AMINO]BENZONITRILE AND USE THEREOF IN THE MANUFACTURE OF A MEDICAMENT FOR TREATING OR PREVENTING HIV INFECTION” was allowed and published for opposition purposes. Teva Pharmaceuticals, Israel’s largest pharmaceutical company and the world’s largest generic drug manufacturer opposed the patent.

Somewhat unusually for Israel patent office practice, following submission of claims and counter-claims, Teva noted a large discrepancy between the parties as to the scale of the monopoly covered, and requested a preliminary ruling on the scope of the claims. Teva argued that a preliminary ruling on the scope of the claims could expedite the opposition proceedings.

The application was filed in Israel on 2 September 2005 and was allowed and published for opposition purposes in the August 2012 journal on 30 August 2012. The application for a preliminary ruling was submitted by Teva on 21 January 2014. Janssen filed their counter-claims on 20 February 2014 and Teva responded on 11 March 2014.

Both sides concur that the claimed invention relates to a solid medicinal preparation that includes a therapeutically effective amount of the hydrochloride salt of rilpivirine  as an anti-viral agent by itself or with others.

The argument between the parties is whether the preparation includes Amtrisitivan (FTC) and tanofoyer Diazonbrocsil fomrate (TDF). Teva claims that the claimed invention does not include the combination of rilpivirine, Amtrisitivan (FTC) and tanofoyer Diazonbrocsil fomrate (TDF), whereas Janssen rejects this interpretation and argues that the invention includes this combination.

Teva alleges that a preliminary ruling on this issue would accelerate the opposition process and save judicial time. Specifically, should the patent office rule that the three-way combination is not included, they would retract their opposition, which by nature of the complexity fo the application is likely to be a protracted affair. On the other hand, if the correct claim interpretation is found to include the three-way combination, the opposition will be focused on other issues and will be less complex.

(we assume that it is in the interest of the applicant for the Opposition to proceed quickly as a patent cannot be enforced until all oppositions are dropped or ruled on, and clearly the faster the process, the cheaper it is likely to be).

The Opposition procedure is acknowledged by section 30 of the Israel Patent Law 1967. Grounds for Opposition are given in Section 31 and these include: (i) a reason why the Commissioner may reject the application; (ii) that the invention is not patentable under Section 4(2) (lacking novelty); and (iii) the oppose and not the applicant is the true owner of the patent.

The Opposer considers the request for a preliminary ruling as a kind of division of the proceedings that will save time and could render further aspects superfluous and cites the opposition to Israel Patent Application 75934 Merkaz Argazim LTD. vs. Levy (1992) as a precedent for such a preliminary hearing. The Applicant considers the request as a delaying tactic designed to result in the Opposition including multiple proceedings.

The Commissioner accepts that the opposition to Israel Patent Application 75934 Merkaz Argazim LTD. vs. Levy (1992) provides a precedent to splitting up an opposition, and that this is acceptable as long as doing so does not prejudice the rights of either party, but notes that the current case is not identical in that it is a preliminary hearing (that the Opposer claims could settle the issues.

The commissioner ruled that he had the authority to make preliminary and intermediate rulings, but was not obliged to do so. From review of the claims and counter-claims he considered that there were differences that could best be clarified by allowing the presentation of evidence.

The Commissioner considers that the issue behind Teva’s opposition was an allegation that the Applicants were claiming more than they were entitled to and that the so-called correct interpretation is a wide construction. In other words, Teva’s issue is Section 13a of the Patent Law and regulation 20. This interpretation (which opens the claimed invention to challenges on novelty and inventiveness grounds) is allegedly supported by the specification and how a person of the art would read the patent specification and claims.

The Commissioner ruled that the Applicant should make an alleged interpretation for the Opposer to oppose, and without this it would be improper to rule on the scope of the claims based on so called internal evidence.  Essentially Section 31  of the law is precisely to determine the scope of the claim protection and there was no justification to preempt this.

The Commissioner referred to Hughes Aircraft and to Zuk Ohr vs. Car Security LTD and considered that in the opposition the Commissioner should rule on the scope of the claims taking the prior art into account, and that one cannot interpret an application without consider the inventive step therein, He then stated that the scope of the prior art before the Commissioner required gathering evidence and this was especially the case where there was an apparent dispute between the parties.

The Commissioner considers that Teva wishes to clarify the scope of the claims based on internal evidence only, ignoring external evidence and expert witness testimony. Specifically the Commissioner noted that TEVA argued that claims 4, 5 and 10 of another Janssen patent, Israel Patent No. IL 173438 included the three-way combination of rilpivirine, Amtrisitivan (FTC) and tanofoyer Diazonbrocsil fomrate (TDF), and to allow the patent would result in two patents for the same combination.

Without ruling on whether another patent of the same applicant is internal or external evidence, the Commissioner noted that there is a rebuttable presumption that the examiner was aware of the second patent. The commissioner considered that an Opposition required bringing something that the Examiner was unaware of, or a problem in the Examination, and does not consider that to be the case.

In light of the above, the Commissioner considers that there are factual differences between the parties and the correct way to proceed is with a full-fledged opposition. Furthermore, the Commissioner argued that a preliminary ruling on the issue of patent scope might give one party an advantage in subsequent proceedings. He also expressed concern that this could open the flood gates to other preliminary ruling that could put a strain on the patent office. (this reminds me of a cartoon in MAD MAGAZINE where the wife wanted a washing machine to save on laundry bills, a car to save on bus fares and a coffee machine to save on restaurant bills, and the husband declared that he could not afford to economise). The Commissioner considered that preliminary hearings should be reserved for clear-cut cases where everything could be cleared up, and not for relatively complex issues.

marlsmen

Finally, as an after-word, the Commissioner related to the so called Marksman hearings in the US, that TEVA suggested was a similar model. The Commissioner noted that Janssen did not see this US style preliminary ruling by the courts in infringement cases as parallel to the Opposition Proceeding before the Israel Patent Office.

In conclusion, Commissioner Kling rejected the request for a preliminary ruling on the scope of the claims (ruling of 24 July 2014) and gave the Opposer until 30 October 2014 to submit their evidence. Costs for this interim ruling will be awarded together with costs for the main decision.

Opposition to IL 181650 Teva vs. Janssen Pharmaceutica, preliminary ruling of 11 September 2014.

COMMENTS

I don’t think that the Commissioner needs to do more to reject a request for a preliminary ruling on one issue than to state that he does not feel it was the most efficient way to proceed. I can’t see one party appealing such a statement. Instead, the Commissioner has waffled over 5 1/2 pages. That is his right of course. However, I found this ruling poorly structured. What disturbs me  more is that the Commissioner seems to consider that the scope of the claimed invention is somehow dependent on the prior art and on expert testimony. I disagree. I think the claims should be sufficiently clear without reference to prior art. The correct interpretation may depend on the specification and on dictionary definitions. It does not depend on prior art. The scope of what is actually patentable does depend on prior art of course. After clarifying what the prior art is, it may be justifiable to narrow the scope of the claims. I am familiar with various decisions that strike patents for claiming more than they are entitled to. I disagree with this approach. I think that it is justifiable to narrow the scope of the claims in light of prior art, and relying on dependent claims is one way to do this. I don’t consider double patenting per se. to be problematic. It may be the basis of a terminal disclaimer limiting the term of the second patent to the expiry date of the first patent, but there is nothing wrong with multiple protection of the same formulation with differently worded claims that protects different aspects. What is of relevance, of course, is whether Janssen’s earlier patent is novelty destroying prior art, or raises issues of obviousness.

I do not agree that an Opposition proceeding needs to rely on a piece of art not before the Examiner. I think that it is sufficient for the Opposer to claim that the Examiner did not give sufficient weight to a piece of art or misinterpreted it to have the right to file an opposition, giving judicial review of the Examiner’s work.

I note that in contradiction to the Commissioner’s approach (and, indeed, to Supreme Court precedent, Judge Binyamini of the Tel Aviv District Court who seems to be one of the better judges on IP issues, actually uses preliminary hearings to try to isolate the real bone of contention and to try to rule on this, making further hearings redundant. This does not imply that the Commissioner is wrong to prefer to have all evidence before him and to follow standard procedure. It is however interesting to note the difference in approaches.

I also note that Janssen is represented by Gilat Bareket of the RCIP group which was where the Commissioner Asa Kling worked prior to becoming commissioner. As Reinhold Cohen is the largest local IP group this is not a surprising state of affairs and it is also true that the Commissioner has been in office for a reasonable period of time. I don’t know whether it is practicable for the Commissioner to excuse himself from all cases where RCIP represents one party or the other. Nevertheless I don’t think this looks good. It may be an additional reason for TEVA (represented by Shin Horowitz) to appeal the eventual ruling.

Finally, I had a quick look at the claims of this application and consider them to be fairly clear. I don’t think that a Marksman type hearing would fairly address the issues that according to the preliminary ruling are those of concern to TEVA. I did not review the specification carefully, but did scan it, and could not find correct spellings in English for the chemical terms I’ve transliterated. Corrections and other comments, are, as always appreciated.


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