Transcendental Meditation

January 11, 2018

meditationThe Maharishi Vedic University Ltd. submitted Israel TM Application No. 249554 for מדיטציה טרנסנדנטלית  which is Transcendental Meditation transliterated into Hebrew. The mark was submitted on 21 September 2012 and covers:

Education services relating to health; conducting of courses relating to business management; production of video tapes for corporate use in management educational training; providing training courses on business management; provision of instruction courses in general management; conducting workshops and seminars in personal awareness educational services, namely, providing motivational and educational speakers in the field of self and personal improvement; personal development courses; personal development training; provision of training courses in personal development; meditation training; teaching of meditation practices; all included in class 41.

The mark is a simple word mark without stylistic or graphic elements.

Background

MaharashiTranscendental Meditation is a technique for avoiding distracting thoughts and promoting a state of relaxed awareness. The Maharishi Mahesh Yogi (1918–2008) derived Transcendental Meditation from the ancient Vedic tradition of India. He brought the technique to the U.S. in the 1960s. The technique is a specific form of silent mantra meditation that is often referred to as TM. Since TM also stands for trademark I considered relating to TMTM for the Transcendental Meditation Trade Mark, TMTMA for the Transcendental Meditation Trade Mark Application, but have decided not to use the abbreviation altogether.

In an Office Action dated 9 February 2015, the trademark examiner ruled that the mark could not be registered as with respect to the services covered, it lacked a distinguishing character as required by Section 8(a) of the Trademark Ordinance 1972.  The Examiner also considers that the requested mark is not registerable since it is descriptive and directly relates to the type or quality of the services provided which are transcendental meditation exercises and the training of transcendental meditation counselors contrary to Section 10(11).

maharishi bookIn the Office Action, the Examiner noted that the organization teaching the transcendental meditation is called that International Meditation Association and that hundreds of schools around the world use the technique. Consequently, one cannot allow the Applicant to monopolize the words making up the mark and thereby prevent other service providers from passing on and teaching the Maharishi’s teachings.

In response to these objections, on 30 December 2015 the Applicant responded by submitting an Affidavit of Adv. Macraman Oleh Oyser who is the general manager of the Maharishi Vedic University Ltd., a teacher of Transcendental Meditation and the head of the Legal Department of the that Global Transcendental Meditation Organization, and the worldwide IP manager of the Applicant.

In their response, the Applicant claimed that the mark was not descriptive of the services provided and maximally may be considered as hinting at the services. Similarly, they claimed that the phrase Transcendental Meditation was a combination of words that is identified with the Applicant and only with them, since the combination was coined by the Maharishi who established the Maharishi Vedic University Ltd.

The Applicant further asserted that the Global Transcendental Meditation Organization and all its branches was established by the followers of the Maharishi which the Applicant is associated with and is part of the same organizational structure as the Applicant. To support this assertion, the Applicant referred to exhibition 2 of Adv. Oyser’s Affidavit, where the definition of Transcendental Meditation taken from the Oxford Dictionary Online was reproduced.

In addition, the Applicant claimed that the mark was in use in Israel since 1973 and had acquired distinction by virtue of extensive usage, advertising and marketing in Israel and abroad. The Applicant considers that that the mark has become a well known mark that is identified with them alone. Similarly, in the years 2009 to 2014 since the application was filed, the Applicant has earned $874,000 from its activities in Israel. These assertions were supported by Adv. Oyser’s Affidavit.

The Applicant failed to convince the Examiner that the mark was registerable and the Trademark Office rejected the mark on 28 January 2016.

yogic fliersOn 2 May 2016, a hearing was held before the then Commissioner of Patents and Trademarks Asa Kling at the Applicant’s request. During the Hearing, the Applicant’s representative argued that the mark was unique and was a compound mark consisting of the combination of two opposites: meditation which is inward looking, and transcendental which is outward looking into the distance. During the hearing, the Applicant also claimed that the registration was requested to avoid misleading the relevant public interested in studying Transcendental Meditation, noting that the Applicant was one of the bodies authorized to train of Transcendental Meditation counselors and this would enable quality control which is an underlying justification of the trademark system.

In that hearing, the Commissioner requested that the transfer of rights from the Maharishi himself to the Applicant be fully documented and substantiated by the 14 August 2016.

On 14 August 2016 the Applicant submitted supplementary evidence including an affidavit of Neal Peterson who was the manager of the Maharishi Vedic University Ltd. the following is the transfer of rights as detailed in the Affidavit:

Maharishi started to teach meditation in 1954 in Southern India, and on 1 January 1958 he established the Spiritual Regeneration Movement SRM in one of India’s capitals. In time, the Maharishi opened 1000s of SRM centers across India where he taught Transcendental Meditation.

meditation profitAfter conducting travels to disseminate his teachings across Asia, in 1959 the Maharashi taught in New York and London and set up the International Meditation Society whilst in London. As he visited more countries, the Maharashi established more local organizations to spread the teachings and to collect tuition fees.

As stated, the first organizations were established under the names SRM or IMS and subsequently these names were less widely used and the movement became better known as GTMO or the Maharishi Movement.

In the early Sixties, Maharishi opened a program for training teachers of the Meditation method under the name Transcendental Meditation. The program is offered by organizations licensed by the GTMO leadership.

To ensure the exclusive connection between the name Transcendental Meditation and the Maharishi Movement and to ensure quality, prior to being accepted to the Transcendental Meditation Counselor Course, the students are required to sign a number of papers in the presence of the Applicant. These include Non-Disclosure and Non-Compete Agreements.

To explain how the rights were transferred from the GTMO to the Applicant, the Deputy Commissioner Ms Jacqueline Bracha referred to the ruling concerning Israel Trademark Applications 29619 and 253899 to the Maharishi Vedic University Ltd. published on 30 October 2017. In that ruling the mark MAHARISHI in English and Hebrew was considered. There, in an ex partes decision, Ms Bracha ruled that the marks could be registered after the Applicant proved that they were the only party using the name MAHARISHI as a trademark to indicate their services.

RULING

Section 8 of the Ordinance states that the basic condition for trademarks to be registerable is that they have a distinguishing nature, as follows:

Marks Eligible for Registration

8.—(a) No mark is eligible for registration as a trade mark unless it is adapted to distinguish the goods of the proprietor of the mark from those of other persons (a mark so adapted being hereinafter referred to as a “distinctive mark”).

(b) In determining whether a trade mark is distinctive, the Registrar or the Court may, in the case of a trade mark in actual use, take into consideration the extent to which such use has rendered such trade mark in fact distinctive for goods in respect of which it is registered or intended to be registered.

Section 11(10) of the Ordinance describes one of the categories of marks that is not considered as having a distinguishing nature.

(10) a mark consisting of numerals, letters or words which are in common use in trade to distinguish or describe goods or classes of goods or which bear direct reference to their character or quality, unless the mark has a distinctive character within the meaning of section 8(b) or 9;

The evidence appended to the Application indicates that the term Meditation relates to an ancient tradition that is in element of many religions.

“Meditation has been practiced since antiquity as a component of numerous religious traditions.”

In paragraph 13 of Adv. Oyser relates to Transcendental Meditation as Mantra Meditation that indicates holy sounds or the names of God. In Hinduism and Buddhism the practitioner of Mantra Meditation attempts to unify himself with the God.

Similarly, in the same section of definitions, the Applicant explains that the source of Transcendental Meditation is the Guru Dev and that according to Maharishi this is a development of Vedic writings and old books that are adapted for the modern world.

Furthermore, as part of their evidence submitted for registering 29619 and 253899 for the mark MAHARISHI in English and Hebrew, the Applicant submitted an Affidavit by Alexander Oded Kotai who is the Israel Director of the that International Meditation Association Israel, of the Maharashi International School and of the Israel Institute of the Science of Creative Intelligence. In the framework of his Affidavit, he also explains what Transcendental Meditation is, and in paragraph 21 states that:

Thus Transcendental Meditation is the name chosen by Maharishi to indicate and mark the meditation technique that he learned from Guru Dev and developed in India in the fifties. Maharishi developed the technique and adapted it for the modern world, and attributed it to his spiritual mentor, Guru Dev. Maharishi explained that the technique is a revelation of the principles found in Vedic writings, which is a collection of religious texts considered the oldest in Hinduism. According to Maharishi the Vedic writings have been misunderstood in the past hundreds of years. Maharishi teaches that Vede is knowledge of the science of awareness, and according to this science there is an awareness of the formation of the material of the universe.

Atharva-Veda_samhita_page_471_illustration-56a483c15f9b58b7d0d75d06From this it appears that the basis of Transcendental Meditation is found in the Buddhist religion and Transcendental Meditation is the Maharishi’s interpretation of Vedic literature. Nevertheless, the requested mark does not appear in the ancient Vedic literature. We are dealing with a phrase that the Maharishi coined for the technique he developed.  Adv. Oyser states this explicitly. Neal Peterson states that in when he started out in Southern India in 1954, Maharishi called this Transcendental Deep Meditation and shortened this to Transcendental Meditation as the years went by.

This raises the question of whether this is enough for the Applicant to be granted a trademark of whether it should be left open to the public for reasons of public interest.

Section 11(5) of the Trademark Ordinance excludes from registration:

(5) a mark which is or may be injurious to public policy or morality;

In this regard, see paragraph 46 of the Ruling concerning Israel Trademark Applications IL 232770 and 232271 for Lubavitch (English letters) and for Chabad (in Hebrew and English)  from 2 May 2016:

The purpose of the Ordinance is not to limit freedom of speech or freedom of religion –  Section 11(5) of the Ordinance does not allow registration of marks that adversely affect the public order.

The conclusion that Maharishi (who transferred his rights to the Applicant as described above), coined the term Transcendental Meditation which is the applied for mark, but this does no give the Applicant the right to register the mark. In this regard one may compare copyright with trademark law as per Neil Wilkof and Shamnad Basheer in their book “Overlapping Intellectual Property Rights”  2012) page 148, which relates to R Griggs Group Ltd and others v. Ross Evans and others ECDR 15,para 20 [2004]:

“…copyright is intended to protect creative skill and labour whereas the function of trademarks is to distinguish the goods or services of one provider from those of another. Trade mark law he said ‘has nothing to do with protecting any creative skill and labour in coming up with a trade mark, rather it is meant to prevent potential confusion among members of public.”

The Applicant claims that the purpose of the trademark registration is to protect the public from unregulated teaching of the technique since the technique relates to the mental health of the patient and there is thus a danger that it being applied by someone not qualified will damage the patient’s wellbeing. This is clear from the protocol of the discussion.

FreudIt is noted however, that the list of services for which the trademark is applied for does NOT include mental health, presumably since treatment of mental issues requires an appropriate education and license from the Israel Ministry of Health. It is noted that the services defined as ‘educational services relating to health’ are related to the psychology profession and is regulated by the Law for Psychologists 1977 which defines Psychology as

Working in Psychology is a profession related to diagnosing and quantifying issues and problems of mental health education and behavior of people and the treatment, rehabilitation, consultancy and training related to these issues and problems is generally to be performed by psychologists.

Since it is unreasonable to register the mark, Ms Bracha did not seem fit to rule on whether this service should be allowed. It is brought merely to discredit the claim that the mark should be registerable since it relates to mental health and is in the public interest that its counselors are licensed by Maharishi Vedic University Ltd.

Transcendental Meditation is a process that anyone can learn and teach and this does not require the agreement of the inventor or creator of the technique. Consequently, the technique must remain available for anyone to learn and teach. It is not fitting to prevent the public from expounding a meditation technique. Even if there is a contractual arrangement that prevents a person from spreading the technique he has learned, it is not clear that the limitation would be enforced by the relevant legal authorities.

In this regard, the words of then Deputy Commissioner Noach Shalev Shmulovich in paragraphs 29and 30, of the Trademark Ruling concerning Israel Application No. 178707 Ori King vs. Adi Shanan I.P.E.C.

I am not certain that one can protect a method of treatment, even temporarily when those that developed it are teaching and disseminating it, since there is no trade secret here. One cannot register a patent for a method of treatment. Although there may be copyright on educational materials, this does not extend to the technique itself or and the right to provide treatments or to teach others. That as may be, one cannot register a trademark to provide protection for a method of treatment by virtue of the registration.

Furthermore, the claim made before me that the application odes not deal with the trademark protecting the method, but only its teaching and dissemination, lacks substance. Where the technique is available to the public its teaching should be available to the public, unless the law provides some limitation, however, the way to provide a monopoly on the technique is not via the trademark register, since registration cannot be used to protect the technique.

Albert_Einstein_Head.jpgIn a similar manner, it appears that if the Hebrew University had tried to register a trademark for “Relativity”, it would be rejected. [MF – The Hebrew University holds the Einstein Archives and owns the name Einstein as a trademark which they license as a source of income.]. One also cannot register Transcendental Idealism as a trademark for an institute teaching Kantean Philosophy. Teaching that doctrine also requires some sort of agreement since one cannot say that everyone is capable of understanding this and teaching others.

The question that arises is whether a coined phrase for a philosophical or religious teaching, such as the application in question which combines transcendental and meditation, that arguably can obtain copyright protection, should be protected under trade laws.

anne frankThe beginning of an answer to this question is found in decisions that relate to names of creations. In a decision given by the court of appeal of the OHIM as it was known, and is now known as the EUIPO, relating to a trademark for “Le Journal d’Anne Frank”, inter alia, for books and newspapers, theatre productions, video tapes and fims on electronic media. See Re 2401/2014-4  Anne Frank Fonds (31.08.2015).

The Court of Appeals considered that the mark does not lack a distinguishing nature with regards to the goods and that the public can use the mark to differentiate between goods and services originating with the mark holder and those originating elsewhere. Furthermore, the European tribunal considered that the wide publicity of the mark as the name of the book was insufficient to prevent it being registered.

As noted in the decision regarding the Opposition to Israel Trademark Application No. 247693 for DEMART PRO ARTE B.V and Fundacio Gala-Salvador Dali vs. V.S. Marketing (Israel 2005) ltd. (31 May 2016) it appears that the European ruling does not sit well with the US Law, nor with the Israel Law regarding registering the names of creative works as trademarks. Seligsohn related to this in his magnum opus Trademark Laws and Related Legislation, Shocken 1973, page 7:

“Regarding Goods”… a trademark cannot exist where a symbol relates substantively or technically with trade. The title of a book cannot be a trademark where there is a link between the title and the content of the book such that the title indicates it content and character.

In a similar matter, the US Supreme Court refused to accept a tort of Passing Off or misleading regarding the origins of a product where a television series was based on a book whose copyright had terminated after ruling that passing off under the Lanham Act was not intended to protect original creations and this was different from copyright. See re Dastar v. Twentieth Century Fox Film 539 US at 37 (2003).

Basheer and Wilcoff relate to this on page 155 of their book:

“…in its decision, the Supreme Court went further, holding that the US trademark laws ‘were not designed to protect originality and creativity and that to hold otherwise would be akin to finding that §43(a) [of the Lanham Act] created a species of perpetual patent and copyright, which congress may not do‘”.

Similar to the US Law, in Israel the protection granted by Copyright Law is given for a limited period, whereas trademarks may be renewed indefinitely. Consequently, prior to allowing a trademark to be registered, one has to balance between the rights of the author and the public good. See page 144 of Basheer and Wilcoff:

“Copyright subsists for a finite period, after which the work falls into the public domain where it can be used by anyone without attribution of authorship, whereas trademark rights can endure for as long as the indicia are used and associated with the owner’s offerings- potentially hundreds of years or more.”

As stated in her decision of 30 October 2017 regarding the registration of the name Maharashi in Israel, Ms Bracha noted that the Maharishi Foundation Limited had splintered from the Applicant’s organization and had given up on registering “Maharishi” in Hebrew or English but still taught the Transcendental Meditation discipline in various territories around the world. She did not think that it was correct to limit the teaching to one organization or another by trademark registration.

Furthermore, one cannot ignore the fact that a registration for Transcendental Meditation Programs exists in Israel TM No. 47738 that was submitted on 17 April 1979 by the Applicant. Without relating to whether this mark should have been registered back then, it is noted that the evidence submitted by the Applicant indicates that the International Association for Transcendental Meditation Israel, which is the local representative in Israel, markets and publicizes their services under a stylized mark that includes the registered trademark “Transcendental Meditation Programs”. It seems therefore that that the mark cannot be registered in Israel without appropriate regulation.

Israel Trademark Application No. 249554 is thus refused.

Ruling by Ms Bracha re Israel Trademark Application Number 249554 for “Transcendental Meditation”, 20 December 2017.

COMMENT

The former Chief Rabbi of the United Synagogue and Peer of the Realm Dr Jonathan Sacks has a joke that appears in Not In Heaven:

Beatles and MaharishiWhen I was a student at university in the late 1960s – the era of student protests, psychedelic drugs, and the Beatles meditating with the Maharishi Mahesh Yogi – a story went the rounds. An American Jewish woman in her sixties travelled to north India to see a celebrated guru. There were huge crowds waiting to see the holy man, but she pushed through, saying that she needed to see him urgently. Eventually, after weaving through the swaying throng, she entered the tent and stood in the presence of the master himself. What she said that day has entered the realm of legend. She said, “Marvin, listen to your mother. Enough already. Come home.” 


January 1, 2018

Senior lecturer Dr Ofer Tur-Sinai has written a book called Cumulative Innovation in Patent Law or rather אמצאות עוקבות בדיני פטנטים.

Apparently the subject matter is inventions that are based on patented inventions, and the need to prevent the patent system hindering rather than promoting technological development.

The launch is tomorrow, Monday 2 January 2018 at ONO Academic College.

The speakers include Judge Professor Grosskopf and various IP lecturers. It looks like a thought provoking program.

ONO conference

Registration may be achieved via this link.


New Israel Patent Commissioner Makes Purpose Driven Interpretation of Patent Term Extension Legislation to Transfer Protection from One Drug to Another

December 21, 2017

Wyeth submitted a request for a patent term extension for Israel Patent Number 120701 titled “2 – PHENYL – 1 – [4 – (2 – AMINOETHOXY OR PROPOXY) ) – BENZYL] – INDOLE COMPOUNDS AND PHARMACEUTICAL COMPOSITIONS CONTAINING THEM ” The patent issued on 26 December 2005 and the basic 20 year protection period will run out on 18 April 2019.

CONBRIZAOn 17 June 2012 Conbriza was registered in the Israel register of drugs. Conbriza contains bazedoxifene acetate. This was the first Israeli registration of Bazedoxifene for medicinal purposes and so, on 19 October 2015, a patent term extension order issued for Conbriza, until 14 April 2022.

DuaviveOn 16 November 2016, the drug Duavive which contains bazedoxifene acetate together with conjugated estrogens was registered in the Israeli register. The Applicant explained that Duavive is a more modern version of Conbriza which Pfizer (which owns Wyeth) had developed and is marketing in Israel.

The treatments are both for treating the symptoms suffered during menopause, such as the so-called hot flushes.

calculation

On 22 May 2017, the Wyeth informed the patent office that Conbriza was taken off the drug register and Duavive was registered. Wyeth claimed that the change should not affect the patent term extension since both drugs contained bazedoxifene, and that the patent term extension should be calculated from the first of the registrations.

Following this notification, the Applicant was invited to attend a hearing under section 149 before a ruling issued. The Applicant did want to attend such a hearing and on 5 July 2017 the Commissioner Ophir Alon indicated that in the hearing, which was held on 31 July 2017, the Applicant would explain why they felt that the provisions of Section 64(vii)(3) should not apply in this case.

Ruling

Section ii(1) of Chapter D of the Law deals with patent term extensions. Inter alia, Section 64D of the Law states that:

64D. The Registrar shall not grant an extension order, unless the following conditions have been met:

(1) The material, the process for its production or its use, or the medical preparation that incorporates it or the medical equipment was claimed in the basic patent and the basic patent remains in effect;

(2) In respect of a medical preparation—a medical preparation that incorporates the material is registered in the Register of Medical Preparations under regulation 2 of the Pharmacists Regulations (Medical Preparations) 5746—1986 (hereafter: Pharmacists Regulations);

(3) The registration said in paragraph (2) is the first registration that allows the material to be used in Israel for medical purposes;

(4) No extension order was granted previously in respect of the basic patent or in respect of the material.

From here, it is clear that the condition for giving a patent term extension is that there is a registration of a drug that includes the active ingredient and it is the first registration that allows the active ingredient to be prescribed in Israel, which was not previously subject to a patent term extension.

Section 64L states the cases where a patent term extension lapses. In 64L(3) it is stated that:

64L. An extension order shall laps in each of the following instances:

(3) If registration of the medical preparation that incorporates the material was cancelled—on the day on which the registration was cancelled;

Thus the wording of the black letter law seems to be that if the registration including the active ingredient is cancelled, the Patent Term Extension is cancelled as well.

The Applicant’s claim is that in cases where the company that registered the first drug has a number of registrations for different drugs containing the active ingredient, the Legislators did not intend that the protection period would lapse simply because one of these was cancelled. Rather, the legislators intended that only in cases where at some time after the issuance of the extension period, there are no registrations of drugs including the active ingredient in Israel, the extension period would lapse. In such an instance, where there are no drugs on sale in Israel there is no legitimacy in keeping the patent term extension active and so Section 64L(3) applies.

The Applicant claims that since Duavive contains the active ingredient and was registered before the registration of Condiza was cancelled, one or other preparation containing the active ingredient was continuously registered in Israel and so the patent term extension remains in force.

The Purpose of the Patent Term Extension Regime

As known, the term of a patent is 20 years from filing in Israel [or from the PCT filing date – MF] subject to paying extension fees. This period is the accepted balance between the desire to encourage inventors on one hand, and to enable the population to benefit from technological advances on the other.

balance

This balance has a special regime for pharmaceuticals and medical devices that is given by Section B1 of Chapter 4 of the Law. This regime compensates patentees for delays in registration but allows the generic drug industry to prepare for market entry to the benefit of the population as a whole. Where the conditions of the Law are met, it is possible to extend patents for pharmaceuticals and medical devices by up to five years.

This is how things were presented on page 18 of Appeal 8127/15 Israel Association of Industrialists vs. Mercke Sharpe and Dohme Corp, 15 June 2016:

The purpose of the extension period is to compensate the patentee for the period of patent protection that is de facto lost due to the amendment of the patent law. The period of protection in Israel and other countries having patent term extensions takes into account the period that the patentee takes to register the drug which is longer than the period lost by the patentee. However, in the Draft Amendment by the Committee for Constitution, Law and Justice it is stated that the extension is for the period that the patent for the drug is registered but regulatory approval by the Ministry of Health has not yet occurred, and so the extension is identical to this period. Either way, the main purpose is to provide fair compensation to the patentee.

Explaining section 64L(3)

As stated previously, there are two possible interpretations to Section 64L(3) of the Law. In the first explanation the words “registration of the medical preparation that incorporates the material was cancelled” relates only to the first registration, as defined in Section 64D(2), so that when the first registration is cancelled, the patent term extension ends.

The second explanation, proposed by the Applicant, is that one should understand the words “registration of the medical preparation that incorporates the material was cancelled “ as relating to all drugs that include the active ingredient and not merely the first one to be registered, so that there are no drugs including the active ingredient on the register.

Ofir Alon

The New Commissioner Ophir Alon considers that the interpretation is in line with the rationale of the Law proposed by the Applicant. As stated previously, the intention of the legislator was to compensate the patentee for the period required to register the drug. Section 64D of the law refers to the conditions for granting a patent term extension. The purpose of 64D(2) of the Law is to ensure that the active ingredient has undergone registration, and that of 64D(3) to ensure that that this was the first instance of the active ingredient being registered.

Since these conditions are fulfilled, it does not seem that there is much significance in the first registration specifically, that its cancellation requires cancellation of the patent term extension and cancelling the compensation that the law provides the patentee, whilst the active material remains registered, albeit with other active ingredients.

Registration of more advanced or better drugs that include these active ingredients is desirable.  Such registration is likely to require additional registration by the Ministry of Health. Adopting an interpretation under which the cancellation of the first registration for which the patent term extension period was calculated automatically results in the cancellation of the patent term extension will lead to a situation in which the patentee who has several registrations will have to keep the registration of a drug not being sold in force merely to keep the patent extension in force. This is artificial and not desirable.

However, accepting the second interpretation allows the patentee to cancel or not renew the first registration whilst keeping the patent term extension in place to protect additional drugs subsequently registered. This prevents circumstances where a patent term extension is in place but no drugs are registered for sale in Israel.

In summary, it appears that the correct interpretation of the Law is to compensate the patentee for the period he could not exploit his patent whilst waiting for regulatory approval, which includes protecting the public interest by promoting development of new treatments, and these aims are achieved by the interpretation allowing the extension to stay in force as long as there are drugs that include the active ingredient.

This interpretation serves the purpose of the Law and the public interest as it provides an incentive for the patentee to develop new versions of its drugs, that are more advanced or more efficacious than the original treatment, and allows the cancellation of registrations that are n longer marketed.

The Commissioner is aware that linguistically, the objective pronoun “the medical preparation” apparently relates to the medical preparation mentioned previously. Nevertheless he does not think that a literal reading helps to clarify things in this instance. For example, if we were to take a literalist approach to understanding section 65L(3) we would wonder what the legislator intended by “including the ingredient” at the end of the section, since it is clear that the medical preparation whose registration was the basis of the patent term extension includes the active ingredient, as stated in Section 64D(2):

(2) in respect of a medical preparation—a medical preparation that incorporates the material is registered in the Register of Medical Preparations under regulation 2 of the Pharmacists Regulations (Medical Preparations) 5746—1986 (hereafter: Pharmacists Regulations);

FROM THE GENERAL TO THE SPECIFIC

The cancellation of the Conbriza registration occurred after Duavive was registered, and so in one form or another the active ingredient was continuously registered from when Conbriza was registered until today.

So, by applying a purpose-driven interpretation to Section 64L(3), the registration was never cancelled and from when the patent term extension was issued until today, the medical preparation was under continuous protection.

The medical preparation Duavive includes the bazedoxifene ingredient together with conjugated estrogens. In other words, to create continuity in the registration, the active ingredient has to be identical to the one for which registration was granted. The Patent Term Extension for Israel Patent No. IL 120701 will remain in force subject to the Applicant submitting an Affidavit that the combination of the bazedoxifene ingredient together with the conjugated estrogens does not create a new material. This affidavit must be submitted within 30 days of this ruling.

Ruling concerning the Patent Term Extension for Israel Patent No. IL 120701 for bazedoxifene (Conbriza and Duavive), Ophir Alon, 15 October 2017

COMMENT

This ruling could be a baptism of fire for the new Commissioner.

The main question that the appointment of a new commissioner generates is whether he will favour the drug development industry or the genetic drug industry. The sums of money generated every day of a patent term extension and in supplementary patent protection for variants such as changes in dosage regimes is enormous. In this regard, Israeli companies are involved as both generic players and as drug developers. Despite TEVA being the world’s most successful generic drug provider, It was Teva’s Copaxone falling over the so-called patent cliff that caused the massive drop in share prices and layoffs, rather than lost sales of generics.

Here the Commissioner has taken an analytical approach to the law, trying to understand the rationale rather than the most literal interpretation. This is in line with guidelines penned by Former Chief Justice Aharon Barak who was known for such interpretations, which perhaps less charitably and more formalistically could be described as subverting the Law as legislated to further lofty aims as he saw them. Such creative interpretations coupled with him declaring that Basic Laws were constitutional and reading into them powers that the Knesset never intended, has led to judicial activism that those on the right see as undermining the Knesset as legislator, and those on the left see as saving democracy from the people’s elected representatives.

I remember litigators that represent the drug developing companies saying during Dr Meir Noam’s term as Commissioner, that, until he was replaced, their clients could not get justice. I do not know if this was fair. Dr Noam was a chemist, and generally where he accepted Unipharm’s arguments that an opposed patent application lacked novelty or inventive step, their arguments were persuasive, or at least seemed so to me. Nevertheless, in practice, he did rule in favour of the generic companies, but his rulings held up on Appeal.

At the start of his term in office, the previous Commissioner, Adv. Asa Kling, could not rule on cases where one side was represented by Reinhold Cohn or Gilat Bareket because of a perceived conflict of interest. Centocor Ortho Biotech Inc. received regulatory approval for a pharmaceutical preparation described in IL 154325.

From the affidavits submitted by employees of the agents for applicant (Reinhold Cohn Patent Attorneys) it is clear that, despite the firm being organized and having procedures in place to cover patent term extensions, there was human error. The deadline was missed and this was discovered seven months later.

Section 164 A1 of the patent law states that:

164.—(a) The Registrar may, if he sees reasonable cause for doing so, extend any time prescribed by this Law or by regulations under it for the performance of anything at the Office or before the Registrar, except for…section 64… …unless he is satisfied that the application in Israel was not submitted on time because of circumstances over which the applicant and his representative had no control and which could not be prevented;

The Deputy Commissioner Jacqueline Bracha threw Reinhold Cohn a life-line by ruling that mistakes were unavoidable, thereby allowing a missed deadline for requesting patent term extensions to be retroactively extended despite the Law being unequivocal that the deadline was not extendible. For more details, see here.

The patent term extension legislation has been amended several times, in the third, seventh and eleventh amendments to the Israel Patent Law.

The third amendment was ambiguous and in an ex-partes ruling affecting three patents in what is now known as the Novartis ruling, Then Acting Commissioner Israel Axelrod understood that the amendment was designed to give a real advantage to the drug development companies and they could choose the country to base their patent term extension on.  This was not what the Knesset intended and the amendment was again amended in what was the Seventh Amendment of the Israel Patent Law, to tidy up this and other ambiguities of the original amendment. Israel Axelrod, who was widely expected to be appointed as Commissioner but instead, was side-ways promoted to the Beer Sheva District Court.

In 2006, under intense pressure from the US who put Israel on their special 301 Watch List of countries not properly protecting Intellectual Property, the State of Israel amended their Patent Law again.

Arguably the Commissioner is correct that the purpose of the Law is to strike a balance between the conflicting interests. Arguably, however, as in the Novartis ruling and subsequent amendment, the intention of the legislators remains to provide narrowest possible intention to rules governing patent term extensions, to encourage generic competition, thereby favoring local industry over foreign companies, and providing cheap medicine. We should bear in mind that the legislation was the result of heavy US protectionist pressure, and in the same way that the US government tries to benefit US interests, it is (at least arguably) legitimate that the Israel Law is intended to protect local interests as much as possible.

Teva is not, of course, the only Israel company to bring a drug to market. Neurim managed to patent Circadine which is a treatment for insomnia based on melatonin, and also obtained patent term extensions around the world. In the UK, the patent office refused to grand a patent term extension arguing that the active ingredient was used in a treatment for sheep.  Judge Arnold upheld the patent office’s position, see patent term extensions for Neurim which was appealed to the House of Lords, and Lord Robin Jacobs referred it to the European Court of Justice ECJ in his last ruling on the bench. The ECJ took a similar position to that of the current commissioner, preferring an interpretation that considers the rationale behind the law to a literalist ruling.

The main problem with ex-partes rulings is that arguments of the other side are not heard.  It is not inconceivable that Duavive works and Conbriza didn’t, not because of a new material being developed but because of some symbiotic effect between the bazedoxifene ingredient and the conjugated estrogens. In this instance, Duavive was developed by Wyeth/Pfizer but it is not inconceivable that such a drug could be developed by a third party. If the Conbriza formulation is not on sale and no other drug by the patentee, should Wyeth-Pfizer be entitled to a drug term extension past the main patent lapsing? Another hypothetic question worth considering is that an active ingredient protected by a patent term extension could actually not be so active at all, and could be co-dispensed with a drug that itself is active, but cannot be patented. The combination could be protected by the patent term extension in a scam designed to defraud the public. I am not alleging that this is the case here. I have no ideas what conjugated estrogens do or how they work. I am merely highlighting a slight logical flaw in the Commissioner’s reasoning.

That as may be, this ruling is a brave but reasonable one. Being ex-partes it cannot be challenged directly, but could be challenged by TEVA, Unipharm or some other generic company launching a Bazedoxifene containing formulation during the extension period.  The Knesset could also decide to amend the Patent Extension Law to rule out this interpretation if they deem fit to do so.


Cost Ruling in Moshe Lavi vs. Zach Oz – A failed attempt to get a poorly written patent canceled.

December 20, 2017

Figs for ACMoshe Lavi owns Israel Patent No. 157035 titled “MODULAR SUPPORT BRACKET” which describes  a support bracket for an air-conditioner unit. He’s tried to enforce it in the past against Zach Oz Airconditioners LTD, and the parties came to an out-of-court settlement.

Lavi then sued again, and Zach Oz countered by applying to have the patent cancelled. This attempt was unsuccessful and a ruling upholding the patent issued on 5 March 2017.

Lavi then applied for costs under Circular MN 80. According to Lavi and his attorneys, Pearl Cohen Zedek Latzer Brats, the costs incurred in fighting the Opposition were a fairly massive 526,750.058 Shekels!? We assume that there is a typo here, and the costs requested were just over half a million Shekels and not just over half a billion shekels, as that would be ridiculous even for Pearl Cohen. It seems that they charge in dollars and not Shekels, and are unaware of the need to round up to the nearest 5 agarot.

Lavi claims that he is entitled to the real costs incurred, which are reasonable, necessarily incurred and proportional in the circumstances. He accuses Zach Oz of acting in bad faith by challenging the validity of the patent. His counsel appended a list of legal counsel’s hours, invoices, and an affidavit by Moshe Lavi.

The Respondents Zach Oz, confusingly represented by an Adv. Pearl (not Zeev, even he is aware that fighting both sides of an opposition proceeding is not acceptable) claimed that the costs were unreasonable and some were unnecessary or disproportional. They also claimed that it was Moshe Lavi who acted inequitably. They note that the case-law states that costs are not meant to be a punishment, and the costs in this case were unreasonable and were incurred due to unnecessary wariness by the patentee. Furthermore, the adjudicator is supposed to take into account the public interest and importance in maintaining the integrity of the patent register. Awarding inflated costs in cases that they lose, would discourage people from challenging the validity of patents and would prevent access to legal recourse.

Ruling

The winning party is entitled to costs incurred in legal proceedings. However, the arbitrator is not obliged to rule actual costs, and is required to consider the specifics of the case and judicial policy. See paragraph 19 of Appeal 6793/08 Loar LTD vs Meshulam Levinsten Engineering and Subcontracting Ltd. 28 June 2009.

In the case-law it was ruled that for the Applicant for actual costs to prove that they are reasonable, proportional and necessary in the specific circumstances. See Bagatz 891/05 Tnuva Cooperative for Marketing Agricultural Produce in Israel Ltd. et al. vs. The Authority for granting Import licenses et al. p.d. 70(1) 600, 615 from 30 June 2005. The limitation of costs to being necessary and proportional is:

To prevent a situation wherein the costs awarded are too great, and will discourage parties from seeking justice, will create inequalities and make court proceedings unnecessarily costly, limiting access to the courts. (Appeal 2617/00 Kinneret Quarries ltd. cs. The Nazareth Ilit, Planning and Building Committee, p.d. 70(1) 600, (2005) paragraph 20.

The amount of work invested in preparing submissions, their legal and technical complexity, the stage reached in the proceedings, the behavior of the parties before the court of the patent office and with regard to opposing party, inequitable behavior of the parties, etc. All these are considerations that should be taken into account when considering “the  specifics of the case”.

In this instance, the patentee did win his case and is entitled to recoup costs, and the losing party does not dispute this. However, in this instance, the patentee is not entitled to the requested costs for reasons detailed below.

Firstly, after consideration of the case and the submissions, none of the parties appear to have acted inequitably. It is not irrelevant that neither party has related to the decisions made in this instance, including the main ruling. This is because there is no evidence of inequitable behavior by the parties. Similarly the affidavits are acceptable. In this regard, it is not reasonable to accept the patentee’s allegation that the challenge to their patent was baseless. The file wrapper shows that the challenger made a reasonable and fair attempt to show that the patent was void, based, inter alia, on prior art.

Furthermore, as to the costs requested, the adjudicator, Ms Shoshani Caspi did not think that they were reasonable, essential or proportional, as required by the Tnuva ruling.

The expert opinion of the expert who attended the hearing, costs of 29,685 Shekels including VAT were incurred. This was considered reasonable. It also appears to have been necessarily incurred. However, the Applicants did not need to use lawyers to prepare the expert opinion’s opinion for him, whilst claiming costs for him preparing his opinion as well. This is a double request for costs and should be eradicated.

In his Affidavit, Mr Lavi claimed that the challenge to his patent caused him to spend $137,901.37 including VAT. This is the 499,065.058 Shekels requested by the Applicant, excluding the expert opinion. The Affidavit explains that this sum includes his legal counsel’s work, couriers, printing, etc., however, no evidence of couriers and printing costs were given, and it appears that these incidentals were included in the invoices from his legal representative. To provide evidence for the legal costs incurred, invoices from PCZL were appended which included the hours spent by attorneys working on the case.

One cannot ignore the fact that the list of work done included demanding extensions, attempts to negotiate an out-of-court settlement, interim proceedings that the opposing party won, an appeal of the refusal to throw the case out, https://blog.ipfactor.co.il/2015/03/08/il-157035-if-one-accused-of-infringing-a-patent-does-not-challenge-its-validity-is-the-accused-estoppeled/

and other costs that are not essential and thus not reasonably chargeable to the other side.

double dipThe attempt to roll these unnecessary costs to the losing side and the double charging for the expert witness are inappropriate to use an understatement, and one assumes that these requests were made inadvertently as they were signed by educated attorneys that are well versed in the relevant legal processes.

Furthermore, after a detailed review of the file, Ms Yaara Shashani Caspi concluded that the case was relatively simple and there were neither particularly complicated legal or factual questions. Consequently, it is difficult to accept that the request for costs of 499,065.058 Shekels [sic] including VAT is reasonable, essential or proportional in the circumstances. It will be noted that as ruled in the Tnuva case (paragraph 19). The real costs that the patentee incurred is only the starting point and not the end point of the costs ruling.

It transpires that the time spent in each round was very large. For example, 65 hours was spent on a request to cancel an expert opinion, and 44 hours on the request for costs, etc. The Applicant did not provide an acceptable justification for these figures.

In light of the above, legal costs will be awarded by estimation, and in addition to the 27,685 Shekels (including VAT) to the expert witness, a further 150,000 Shekels (including VAT) are awarded in legal fees.

The deadline for paying the costs is 30 days, then interest will be incurred.

Legal Costs Ruling by Ms Shoshani Caspi in cancellation proceedings of IL 157035 Moshe Lavie vs. Zach Oz, 25 October 2017.

Comment

The whole case was mishandled by Zach Oz, who could and should have won the original infringement case in court, but decided to accept a poorly worded out-of-court settlement. By any reasonable attempt to construe the claims so that the patent was not anticipated by support brackets for shelves, Zach Oz’ supports were not infringing. In other words, they could have used the Gillette defense.

Ms Shoshani Caspi’s criticism of PCZL overcharging and double dipping is appropriate in this instance. The attempt to have the case thrown out on a creative estoppel based on not having challenged the validity of the patent when sued for infringement was ridiculous. Ironically, this patent is not worth the costs spent on litigating it. This is a clear instance of lose-lose by all concerned except the lawyers.


NOCTUROL

December 20, 2017

NocturolWellesley Pharmaceuticals LLC submitted Israel Trademark Application No. 284926 for NOCTUROL; a Pharmaceutical preparations for reducing frequency of urination in Class 5.

NocturnoUnipharm, a large Israeli generic drug manufacturer and distributor that sells the mild hypnotic Zopiclone as a treatment for insomnia under the brand-name NOCTURNO opposed the mark on 10 September 2017.

On 11 September 2017, the Court of the Israel Patent & Trademark Office gave Wellesley Pharmaceuticals two months to file a counter-statement of case.

The deadline of 11 November 2017 passed without a  a counter-statement of case being filed, and on 20 November 2017, Unipharm requested that their Opposition be accepted and the application refused.

Section 24(v) of the Trademark Ordinance states:

If the Applicant does not submit such a response, it is as if they have abandoned their mark.

The Opposition to Israel Trademark Application No. 284926 is thus accepted.

In general, the prevailing party is entitled to costs. The considerations are the time involved, complexity, work done, equitable behavior, etc. Under her Authority given in Section 69, the Adjudicator, Ms Yaara Shoshani Caspi, ruled costs of 2000 Shekels including VAT.

COMMENT

Notably, the director of Unipharm, Dr Zebulun Tomer (who has more experience in patent oppositions than any mere lawyer or patent attorney) filed the trademark Opposition himself, without involving their legal counsel Adi Levit.

As Unipharm did not use legal counsel, they are not entitled to costs. This is clear from Patent Oppositions where they prevailed in similar circumstances. The cost ruling was given without sides requesting costs and is appealable to the District Court. However, the I would be surprised if Wellesley contests it.


ENVY

December 20, 2017

276449Bacardi & Company LTD filed Israel Trademark Application Number 276449 consisting of a stylized mark comprising a pair of wings and the words ANGEL’S ENVY, the mark is for alcoholic beverages, except beers in class 33. They also filed Israel Trademark Application Number 275692 for North American whiskey; alcoholic beverages based on, or flavoured with North American whiskey.

ENVYLa Fée LLP filed Israel Trademark Application Number 278588 for ENVY as shown. The mark covers Spirits; absinthe; alcoholic beverages containing spirits; alcoholic beverages containing absinthe in Class 33.

(Absinthe  is an anise-flavoured spirit derived from botanicals, including the flowers and leaves of Artemisia absinthium (“grand wormwood”), together with green anise, sweet fennel, and other medicinal and culinary herbs. In other words, it seems to be a type of Arak,

angel's envyBacardi’s marks were filed on 31 March 2015, and La Fée’s marks were filed on 27 July 2016, before Bacardi’s marks were examined. As the marks were co pending, a competing marks proceeding ensued. On 26 June 2017 the parties were given three months to submit their evidence regarding their rights to the marks.

On 13 September 2017, La Fée LLP submitted an unclear communication that related to priority. On 14 September 2017 the Israel Patent Office requested clarification and asked if the submission was a type of evidence. However, La Fée did not respond. On 26 October 2010 after requesting and obtaining extensions, Bacardi submitted their evidence. In view of the lack of response from La Fée, on 7 November 2017, the patent office sent them a letter giving a grace period of a week to submit their evidence. However, La Fée LLP did not respond.

Section 67 of the Trademark Ordinance 1972 states that

Subject to any regulation under this Ordinance, evidence is proceedings before the Registrar shall be by affidavit under section 15 of the Evidence Ordinance (New Version) 5732 -1971, or by declaration made abroad under the law of the place where it is made, so long as the Registrar does not otherwise direct; but the Registrar may, if he thinks fit, take oral testimony in lieu of or in addition of written evidence, and may permit the deponent or declarant to be cross-examined.

In this instance, La Fée did not submit any affidavit and there does not seem to be any justification for them failing to do so.

Consequently, regulation 25(b) applies:

If the Applicant fails to submit a detailed response within three months of the invitation to do so, the Applicant will consider the Application as cancelled under Section 22 of the Ordinance and a notice to that effect will be sent to the Applicant.

Since La  Fée chose not to submit evidence at all, and not to respond in any way to the Queries from the Court of the Patent Office, the Adjudicator, Ms Yaara Shoshani Caspi ruled that filed Israel Trademark Application Number 278588 for ENVY be considered abandoned, and Bacardi’s marks proceed to examination.

Using her powers to rule reasonable costs under Section 69 of the Ordinance, noting that Bacardi did exert effort in responding and Le  Fée’s behavior, she ruled that le Fée pay 15000 Shekels costs (excluding VAT) to Bacardi within 14 days or the costs will be index linked and bear interest until paid.

Competing marks ruling concerning 276449, 275692 and 278588, Yaara Shoshani Caspi , 16 November 2017.


Patent Attorney David Spolter wins Israel Scrabble Tournament

December 19, 2017

scrabbleIsrael Patent Attorney David Spolter won the Jerusalem Scrabble club’s annual tournament on Sunday.

Due to a last minute family commitment I pulled out minutes before the competition started, but frankly am not in David’s league.