The Boundaries of Patentability

Yesterday,  December 2nd 2009, JMB, Factor & Co. hosted a seminar on the boundaries of patentability. The event was held at the “Israel Yaffa Conference Center”, and was attended by a select audience that included IP Law lecturers, patent attorneys and IP lawyers from the various Israeli firms, representatives of university and hospital tech transfer companies, visiting Korean and German patent attorneys, inventor-entrepeneurs and IP managers of several industrial companies.

After words of wecome from my partner and veteran patent attorney, Jeremy Ben-David, Greg Kirsch, a partner of leading US Law firm, Ballard Spahr, who heads up the software patent group there, spoke on the Bilski case, currently on appeal to the Supreme Court.  He took the audience through the main claim, the Patent Office Ruling and the Federal Circuit Court of Appeals ruling and the interim guidelines to examiners, but noting that the Supreme Court presumably took the case as they intended saying something, he declined to hypothesize which way the Supreme Court would rule. Greg finished by giving some practical guidelines and tips on claim drafting and writing the specification for software patent applications.

Dr. Ulrich Storz, Partner, Patent Attorney of Michalski Huettermann & Partner, Dusseldorf, Germany, spoke about gene patents in Europe and Dr. Aloys Huettermann, another partner of the same firm, spoke about embryonic Stem Cell research being non-patentable in the EPO but patentable in Germany, though on appeal to the European Court of Justice, and how the ECJ and EPO interact.

My brother, Adv. Aharon Factor provided some welcome light relief by briefly discussing the Order Public considerations in trademark law, and cases like Cocaine and Bong-Water for energy drinks, Big Pecker, Dykes on Bikes and Old Glory condoms.  

I then discussed what the Israel Law is and what perhaps it should be with regard to the patentability of business methods, software, genes and embryonic stem cell research.

The seminar finished with a vote of thanks from Mr. Michael Ophir, Israel Patent & Trademark Commissioner  between 1988 and 1998, who made a rare public appearance. Mr. Ophir regaled the audience with witty anecdotes regarding various controversial patent and trademarks decisions from the period of his tenure. He explained why he decided to allow a trademark for Jesus Boat, arguably offensive to Christians, and reminisced on one of his more significant decisions, when, in 1994 he rejected patent application No. 68409 of United Technologies Corporation, that dealt with computerizing a system for the energy-efficient flying of a helicopter, which was subsequently overturned by the Jerusalem District Court, C.A. 23/94 (Jerusalem) United Technologies Corporation v. The Registrar of Patents, Designs and Trademarks, District Court Decisions, Vol. 26 (8), 729.  He explained how he’d unsuccessfully petitioned the Attorney General to appeal the decision to the Supreme Court. Evidently, 15 years later and in his late  Seventies, the court ruling still rankles him. 

Categories: Academia, Business Method, Intellectual Property, Israel, Israel IP, Israel Patent, Israel Related

1 reply


  1. Bar Ilan University Holds Premature “After Re Bilski” Conference « The IP Factor

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