Patent Attorney Round Table

February 14, 2017

knights-round-table-1

The Patent Office is hosting a round table on 21 March 2017 between 2 PM and 6 PM to discuss regulating the patent profession.

Background

In September 2016 the Israel Patent Office called for comments concerning proposed legislation to regulate the patent profession.

The official position of the Association of Israel Patent Attorneys is based on the Code of Ethics for Attorneys at Law. It was drafted by attorneys-at-law working for the Reinhold Group, who are not themselves patent attorneys.

I have written up a list of issues that I consider need regulating, see here and here. To my mind, treatment of trainee patent attorneys is a critical issue and so is the limits of the profession. At present, there are a large number of non-licensed service providers that ‘help’ entrepreneurs obtain patent protection. Some are foreign attorneys practicing in Israel opposite foreign patent offices, and others are not licensed anywhere but offer renewal services, portfolio management services and other services.

In general, one can expect the profession to be expansive when interpreting the law forbidding those not licensed in Israel as either Attorneys-in-Law or Patent Attorneys. Those that are not licensed tend to construe the law more narrowly and may see themselves as not being able to formally represent clients opposite the Israel Patent Office during patent prosecution, but see no reason not to draft applications for the Applicant to file directly, no reason not to handle renewals, not to offer search services and no reason not to prosecute patents abroad on behalf of Israeli applicants.

The problem is, of course, when something goes wrong.

The lines are currently blurred. For example, I was surprised to note that a company calling itself Patenting Solutions that is headed up by an ex-paralegal, now CEO, is now the official address of record for an Israel issued patent. This seems to imply that the Patent Office recognizes one of these cowboys non-licensed practitioners.

I would NOT advise bona-fide licensed practitioners to rely on their professional organizations to look out for their interests, and I particularly urge small firms of licensed patent attorneys and sole-practitioners to come along. That said, I urge ALL interested parties to attend the round table, including those not licensed in Israel, such as US giants like Finnegan. Registration is by the following email: TamarK@justice.gov.il.

 


Seeking a New Commissioner

February 12, 2017

Friday’s Idiot Achronot had an advertisement to the effect that the Ministry of Justice was looking for candidates to serve as the Head of the Patent Authority – The Commissioner of Patents.

More details can be obtained using ‘Chat’ at http://www.csc.gov.il

Applicants should download and fill out form 584 and a questionnaire on the website. In addition to the form and questionaire, Applicants are invited to submit a CV, recommendations, certificates of qualifications and other documents that indicate their suitability.

The final date for submission is 21 February 2017.

COMMENT

The last time the Ministry of Justice went on a Commissioner Hunt was in November 2010. I don’t know if Commissioner Kling is intending to go back to private practice, has been appointed to the Supreme Court or is intending to explore where no man has gone before him. I also don’t know if he’s given notice, has received his marching orders, or if the contract was only for 7 years.

Candidates are expected to have 10 years of practice since being licensed as attorneys by the Israel Bar, and should have IP experience and knowledge. Since the deadline for submission of candidateship is only a couple of weeks away, I suspect that the committee has a preferred candidate in mind, but do not have any idea who that is. I wonder if Deputy Commissioner Ms Jacqueline Bracha is putting forward herself as a candidate? Maybe it is time for a woman to serve in this illustrious position?

I think that coming after Dr Meir Noam, Commissioner Kling had a hard act to follow, but has done admirably well. The Israel Patent Office is now fully computerized and Patent Attorneys can submit Applications and other documentation on-line. There is greater transparency in the patent, design and trademark examination process (although we doubt the appointment of a Commissioner will be a transparent process). The patent office hosts periodic round tables and seminars to educate the profession and to obtain feedback from them. Examination standards seem to be higher and more consistent and decisions and rulings are detailed, and relate to the black letter law, case-law and comparable decisions from the UK, US and EPO.

It is the nature of a blog like this to point out apparent inconsistencies and what we consider to be poor rulings, but these are isolated instances. The overall picture is healthy. There have even been recent instances of patent attorneys who have moved from private practice to working as Examiners.

We wish all candidates the best of luck!


Teabagging

February 8, 2017

pcteabagReaders will be aware that I have formulated a special blend of green tea and choice mint which I distribute as PCTeabags.

I shipped out a cubic meter of these to Milan for distribution at the AIPPI conference, and couriered seven cartons of these to Brussels for distribution at the Premier Cercle conference. In my write-up of that conference, I noted that we arrived sans-luggage, and had to go to sleep sans-culottes. What I didn’t write was that we arrived without the PCTeabags, or rather they did not arrive.

I have now, two months later, received letters from the Israel Post Authority requesting me to pay to release the returned boxes from customs! This is particularly annoying. I sent these by EMS with a three-day delivery schedule and they should have arrived before the conference. Not only did the nice warming, calming, stress-relieving brew not arrive on time, due to Israel Post incompetence, but it did not arrive at all. Not only have I wasted over 1000 Shekels on couriering the teabags that were not delivered and are now being returned, but I have to spend a further few hundred Shekels getting this “import” released from customs.

It is tempting to sue the Israel Postal Authority for this.


Frankenstein’s Monster

February 6, 2017

265232.pngIt sometimes happens that a second applicant files a similar trademark application to a previously filed mark that is pending. in such cases, a competing marks proceeding is initiated. the first to file gets some credit for so doing, but the main issue in determining which mark goes on for examination is the amount of usage by the two parties and good faith, or rather bad faith.

If one party is guilty of inequitable behaviour, their application will almost certainly be stayed. Where there are genuine independent filings of two applications for the same or very similar mark by different applicants, such that the second mark is filed before the first one is registered and they are co-pending, then the more widely used, better known and more intensively advertised mark proceeds to examination, and only once this mark is allowed or canceled, does the second mark  proceed to examination, where, in all likelihood, the registration of the first to be examined mark will prevent the registration of the second mark.

frankensteinIP Factor was approached by Best Foods Ltd. to file the logo shown above as a trademark application in classes 29 and 30. An application was filed and received the Application Number  IL TM 265232.

Prior to this being allowed, a second applicant, a Mr Doron Frankenstein filed Israel TM Application 261955 for the identical mark in the identical classes and so, on 10 May 2015, a competing marks proceeding was initiated as per Section 29 of the Ordinance.

On 4 November 2015, the parties were given three months to file their evidence, and were informed that failure to do so would result in their application being considered withdrawn and their application canceled as per regulations 24 and 25.

Best Foods Ltd cooperated with us and we filed their evidence. However Mr Doron Frankenstein did not file evidence and on 1 January 2017, the Trademark Department of the Israel Patent Office gave his attorneys were given seven days notice to file their evidence or their application would be deemed withdrawn.

Essentially Regulation 22 provides a three-month period for providing evidence, and authorized the Commissioner to cancel the application if no evidence is filed, or to grant an extension if reasonable to do so. Regulation 24(b) states that if the conditions of Regulation 22 are not met, the Application is considered as canceled, and the Applicant is informed accordingly.

The period for providing evidence was 14 February 2016 which is long past, so Israel TM Application 261955 to Frankenstein is considered withdrawn, and costs of 2000 Shekels are awarded to Best Foods Ltd. Application Number  IL TM 265232 was examined and has now been allowed.

COMMENT
It seems that Mr Frankenstein was a distribution agent for Best Buy Ltd. It could have been interesting to see who would have prevailed in a competing marks proceeding in such a case, i.e. whether the distributing agent may be entitled to rights in a mark registered locally. However, in this instance, since no evidence was filed, the substantive issues were not addressed.


Pipped to the Post

January 26, 2017

pippedBy nature of my work I meet a fair number of private inventors. Where there appears to be a possibility of obtaining a patent, I explain the process, costs and options. I stress the importance on not waiting for the patent application to issue before trying to raise funds and move the project forward.

Whether or not it is advisable for the client to do a patentability search very much depends on the technology, how well the client is aware of the market, and the client’s business plan.

Frequently an application, perhaps US provisional, perhaps Israel Application, regular US application is filed and a year goes by and the Paris Deadline comes up. Often the client is not in a position to file regular applications around the globe and goes the PCT route.  Not infrequently, 18 months later, even with a positive search report that indicates that the claimed invention is patentable, the money has run out and the client forgoes national stage entry, or merely files in the US.

I rarely get enthusiastic about a new idea to the extent that I’d consider investing in it, but occasionally clients manage to launch successful products and establish companies.

A year or so back, I drafted an application for a client that had an idea that, on searching the Internet and patent databases, seemed to be patentable. When we filed a PCT application we got a fairly positive search report, that cited some art that had not published when I did my original search. Rather later than I had advised, the client started looking for investment. In this instance, a consultant did a new search and found a competing product on the market. With details of the product I could find design and pending patent applications and was relieved to see that nothing had published when I did my search. They managed to file an application and then develop and market a product which, from their website, it is clear to me that they are aware that there is room for improvement. My client is an expert in her field and her husband has complementary expertise. As I team, I thought they’d succeed. We can probably obtain a patent for their product despite the competing product on the market, but if and when they launch they will have to compete with an existing solution that itself shows many of the advantages of their product over earlier art.

History is full of examples of scientists and inventors that discover or invent something about the time that a competitor makes a similar discovery or invention. It happened to Darwin, Newton, Alexander Graham Bell, Tesla and others. It has now happened to a client of mine. It happens.

Even the best of searches won’t uncover something that has not published, even if a patent has been filed. In this instance, the client can continue to develop her product with its assumed improvements but it is not unlikely that the competitor has already filed a patent application for the improvements as well. Even if the client’s product is superior, it will be considered a copy of the first product to be launched.

In this instance, the client could and should, in my opinion, have moved faster, but raising funds, setting up a company, prototying, etc. does take time. Inventors have to realize that even if they do everything correct someone else may beat them to the finishing line with a similar product or with a very different one that supplies the same market need.

All sorts of problems can arise in bringing a product to market, including safety issues, manufacturing issues, regulatory issues, unforseen problems that result in the developing of a workable solution taking much longer than expected or in the budget running out. entrepreneurship is not for the faint-hearted.

Even when enthusiastic about a new invention I try and curb that enthusiasm. I can usually tell if a product will work from a scientific / technology angle and whether it is patentable from a legal angle. That is what I am trained to do. Bringing a product to market and understanding whether the market will be willing to pay for the product is something else entirely. I don’t think betting on horses is a good analogy, but entrepeneurship is a risky business. I can and do observe from the side, and get tremendous satisfaction when breakthrough products are successful and clients makes a go of it.


Oral Exams

January 25, 2017

oral exam.jpgThe Israel Patent Office is holding the vivas or oral exams for wannabee trainees on 28th and 29th March.

The first day coincides with the IPR master classes.

Although  the IPR conference is not geared towards trainee patent attorneys looking to obtain their Israel license, there are no doubt some in-house IP managers that are trying to qualify in Israel, and there may be some trainee patent attorneys that would find the Best Practices Conference of interest. Some of the judges might be interested in attending a Master Class.

I think it is a shame that the Israel professional organizations, patent office and conference coordinators cannot coordinate to avoid these clashes. The IPR event is an annual affair and there are oral exams twice a year. Would coordination be so difficult?

The dates of the written exams for Computers, Electronics and Mechanics will be on 2 April 2016 and for Biology and Chemistry will be on 4 April 2016. I don’t know how many patent attorney candidates are capable of answering mechanics and chemistry or computers and biology, but some patent attorneys and trainees have wide scientific interests and capabilities and I am not sure that it is justified to force candidates to decide in advance which sitting to attend.


Best Practices in Intellectual Property 2017

January 25, 2017

IPRIPR (Intellectual Property Resources) is hosting their Best Practices in Intellectual Property 2017 Conference.

This will be the fifth annual Best Practices Conference, which organizers claim will be the most complete and comprehensive conference in Israel in 2017. It is a little early to determine whether this claim will be found to be accurate, but it may well be.

The follow on line “providing you with knowhow and practical tips in the rapidly changing and evolving world of corporate intellectual property practices” is certainly true.

The conference features speakers that are the heads of IP strategy and patent counsels from Google, Microsoft, Intel and Philips. As in previous years, the conference will be held in the Sheraton Hotel, Tel Aviv on March 27th There is a second day of master-classes on March 28 which will cover specific topics.

For more information, see here.