Squaring the Circle and Regulating the IP Profession in Israel

March 24, 2017

I was privileged to participate in a ’round table’ at the Israel Patent Office today on the topic of regulating the Patent Attorney profession. In this article I am going to refer to people without giving their titles such as Dr, Adv. and Patent Attorney, since most people were entitled to two or three such terms, but some aren’t and I don’t want to misrepresent anyone.

Perhaps instead of round table, Quad or Quod would be a better term as there was no table in evidence, and the chairs were laid out in a square, with the Commissioner Asa Kling, Assistant Commissioner Jacqueline Bracha and a legal liaison person from the Ministry of Justice along one side; the  various patent attorneys and the odd lawyer present, being arranged along the other three sides in an open ח shape.

basic instinctThe lack of a table and the open square was, in my case, a little distracting, as opposite me was a peroxide blond streaked patent attorney in a dress with slits up both sides who kept crossing her legs and seemed to be appealing to my Basic Instinct.

Kfir Luzzatto was looking younger than ever, and seemed to have restored his hair by self-hypnosis and meditation. I was thinking that his wife Etty was looking young enough to be his daughter and must also be using self-hypnosis and meditation, and then realized that it was his daughter, Michal, who is the fifth generation of this family firm.

There was a healthy sprinkling of sole-practitioners and senior partners of smaller offices, including Ed Langer, Daniel Feigelston, Simon Kahn, David Agranot, myself, Sinai Yarus and Erez Gur.

There was a number of representatives of Reinhold Cohn including Ronnie Benshafrut and Michal Hackmey. Gal and Amit Ehrlich and Maier Fenster represented their practice, there were some representatives of the Ministry of Justice, Tal Sines from Haddassit, someone from the tech transfer company of one of the universities, and a transcriber who taped the entire meeting. Unfortunately, Ofir Alon of the Technion tech transfer company who has just been appointed the new Commissioner of Patents was absent.

The meeting was friendly and constructive. It highlighted the general perspective of the larger firms that comprised attorneys-at-law and patent attorneys but could not have both as partners and needed creative solutions to practice, versus the smaller firms that felt that some of the regulations under discussion would make it difficult or impossible for them to continue as sole-practitioners. Read the rest of this entry »


More Coffee!

March 23, 2017

EdenFollowing on the heels of the Izhimis family feud, we now report on a competing marks proceeding between Abu Shukra Import Export and Marketing Ltd and Strauss Coffee B.V.

Again, this relates to Turkish coffee. On 2 May 2013, Abu Shukra filed Israel TM application number 255526 in class 30 shown alongside.

This ruling relates to all over packaging designs being used as trademarks and to branding concepts. to my mind, it also raises issues of monopolies and market abuse, but this is beyond the competence of the adjudicator and commissioner to relate to, although I think judges might see things differently.

22263EliteOn 16 July 2014, but before Abu Shukra’s mark was examined, Strauss filed Israel TM Application No. 266680 for Coffee, roasted coffee, roasted and ground coffee and coffee substitutes, all in class 30, and also Israel TM Application No. 266683 for Turkish Coffee, roasted Turkish coffee, roasted and ground Turkish coffee and Turkish coffee substitutes, all in class 30. Strauss Coffee’s marks are shown alongside.

[At this stage we note that Strauss Coffee owns the Elite brand among many others. Strauss employees 14,000 people in 20 countries. The empire was built on their Turkish coffee brand, but they also now own Sabra, the leading hummus brand in the US, are partners with Yotvata dairies and Yad Mordechai Honey – MF]. Read the rest of this entry »


Benjamin Barish, z”l

March 22, 2017

ben barish

It is with sadness that we note that on Thursday, March 15, 2017, Benjamin Barish passed away at the age of 91.

Ben was born in Detroit, Michigan, and served as a sailor in the U.S. Navy at the end of World War II. After receiving an electrical engineering degree, Ben worked as a patent Examiner in the U.S. Patent Office from 1947-1952.

After receiving his law degree from George Washington University, he worked as a patent lawyer in government and corporate practice.

In 1963, at the age of 38, he made Aliyah with his Israeli wife Bruria, and registered to practice before the Israeli Patent Office, receiving Patent Attorney license 29. We note that this was before the Israel 1967 Patent Law was legislated.

Ben Barish was licensed to practice in Israel and the US (before the USPTO, Washington DC and Michigan Bars).

I believe that Ben Barish then joined Reinhold Cohn which was a small firm at that time, but subsequently set up his own office in the early 1970’s.  Itzhak Rachailowich and Jonathan Patentkin who both trained under Ben Barish spoke highly of him. As was typical of his generation, Ben Barish used to dictate patent applications and had secretaries to type them up!

Ben Barish begat Mark Friedman who begat Gal Ehrlich, and then, in one of the incestuous relationships so common in our profession, at the turn of the millenium when Gal Ehrlich set up his firm, Barish moved in with and became of counsel to it. Being also an Attorney-at-law, he made sure to have a separate entrance from Ehrlich, but the offices were interconnected through a door.

In the brief period I trained at Ehrlich a couple of decades ago, Ben Barish stood out as being a mensch. He was generous with his knowledge and experience. Apparently he continued to prosecute patent applications until well into his late 80s.

May he Rest in Peace.


A Storm in a Coffee Cup

March 20, 2017

This ruling relates to competing rights of different relatives to register and use trademarks for a family business that eventually split up. The marks were registered by a cousin living in Ramallah, and cousins living in East Jerusalem applied to have the marks cancelled on various grounds including passing off, misleading marks, inequitable behavior and lack of use.

234876 LOGOChain Stores of Izhiman Coffee Company own two trademarks: Israel Trademark No. 234876 for the logo shown alongside, and 234877 for the Arabic and English word mark
بن ازحيمان IZHIMAN’S COFFEE.

Maazen and Shapik Izhimian applied to have the mark’s canceled under Section 39 of the Trademark Ordinance 1972, and further under Section 41 for lack of use.

The mark was first applied for by Muhammad Musa H’alad Izhiman in January 2011, and after examination, was registered on 2 May 2012 for “coffee and coffee spices in class 30.” On 27 February 2014, the mark was assigned to Chain Stores of Izhiman Coffee Company, a Palestinian Company based in Ramallah that was owned by Muhammad Musa H’alad Izhiman and his two sons Kassam and Nasser.

On 5 March 2014, the brothers Maazen and Shapik Izhimian who own a Jerusalem based business in Bet HaBad Street, for marketing and trading in coffee and spices under the name “Izhiman’s Coffee” and who are cousins of Muhammad, submitted a cancellation request. In July 2014, the owners Chain Stores of Izhiman Coffee Company submitted their response.

The Background

EnjoyMuhammad, his three brothers and the Applicants for cancellation are all members of the same clan, that were involved in the family business established by Musa, Muhammad’s father, together with Mahmud, the father of Maazen and Shapik in the 1980s. The company had three addresses, the Ramallah address, the Jerusalem address now run by Maazen and Shapik, and a third branch in Abu Dis.

In 1994, Muhammad fell out with his brothers and nephews and received sole ownership of the Ramallah store. His three brothers and the nephews shared the Abu Dis and the Bet HaBad Jerusalem shops and opened a further outlet themselves in Ramallah. In 2000 the applicants for cancellation and Muhammad’s three brothers opened a fourth branch in Salah Shabati Salahadin Street in East Jerusalem. In 2008, these partners ceased to cooperate, and Maazen and Shapik were left with the Jerusalem Store in Bet HaBad Street.

love.jpgMaazen and Shapik submitted an affidavit written by Maazen and a second one from Riyadh Ghazi Halaq, the owner of a coffee shop near the Bet HaBad address that buys his raw coffee from them. The mark owners responded with an Affidavit by Nasser Muhammad Musa Izhiman, Partner and authorized signatory. At the end of September 2016, the Adjudicator of IP, Ms Yaara Shoshani Caspi held a hearing and the witnesses were cross-examined.
Read the rest of this entry »


New Israel Commissioner of Patents and Trademarks Appointed

March 19, 2017

Ofir AlonThe Minister of Justice Ayelet Shaqued has appointed Attorney and Patent Attorney Ofir Alon as the new Israel Commissioner of Patents, Trademarks and Designs to replace Commssioner Asa Kling who si coming to the end of his tenure.

Ofer Alon has degrees in Computer Science and Law from Haifa University. He qualified in IP Law in the Law Offices of Richard Luthi where he worked until 2006 and then became the IP Director and In-House Counsel of “On Track innovations”. Since 2010, Adv Alon has served as the head of Intellectual Property for the Technion’s R&D Tech Transfer Company.

The appointment follows the advice of the Committee for Finding a Suitable Candidate that was headed by Ms Ami Palmor, Director of the Ministry of Justice. Other committee members include Ilan Ram the Director of the Senior Civil Servants Organization, the Chief Scientist Avi Hasson, Professor Orit Fishman Afori – Dean of the Law School of Michlelet Minhal and Academic Representative and Retired Justice Izaak Engelhard serving as the public representative (which seems innappropriate to me – judges can represent the judiciary. The public is best represented by the layman. Maybe in this instance, a local serial inventor?).

According to the press-release, the committee were impressed with his developed views and vision regarding the Patent Office, its activities and its challenges, and with his plans for its international activities.

Comment

We note that with the appointment of Outgoing Commissioner Asa Kling the make up of the committee remained confidential. This led to rumours of cronyism between the judge allegedly chairing the committee and Judge Kling, the commissioner’s father. I cannot comment on whether these rulings were well founded or baseless, but was very impressed with the outgoing commissioner’s rulings.

In this instance, the identity of the committee members has been published. We see this as a welcome step towards greater transparency. We are pleased that the committee were impressed with Adv Alon’s plans, however the press-releases do not explain what these plans are. We also do not know whether any other candidates were considered and if so, who the other candidates were. What was clear was that the published advertisements in the newspapers gave very short deadlines from responding, raising suspicions that this was a political appointment. A candidate with vision and proven management skills seems a very good idea. He will however also require judicial competence.

Mover and Shaker Kim Lindy claims to have helped Ofir Alon receive his appointment to the Technion Tech Transfer Company. However, she does not allege to have influenced his appointment as commissioner.

In general, I am impressed with Shaqued’s judicial appointments and attempts to broaden the Supreme Bench to be more representative and heterogeneous. I also think the Commissioner should be more or less formalistic in his approach to IP rulings. That said, I have no ideas what Ofir Alon’s views are regarding IP issues or indeed, and other legal or political issues.

The past two commissioners have revolutionized the patent office, and it is now fully computerized. There is pending legislation concerning designs, and proposed legislation to put the profession of patent attorneys onto a stronger legal footing. The patent office is now a profit generating, efficient and professional body. We wish the new commissioner luck and hope he takes the organization forwards to new heights.

 


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!