In Israel Application number 146776 titled “Device for sampling blood droplets under vacuum conditions“, Eli Oren, an employee of the Applicant, Shl Telerefua LTD. (telerufuah is Hebrew for tele-medicine) filed a request to be named as an inventor.
The Application in question was apparently allowed in Israel and should publish for Opposition purposes in the July 2010 journal, which is expected to publish in a few months as there is a backlog.
In a decision by Deputy Commissioner Noach Shalev Shmulovich, that published on 25 August 2010, it was ruled that Mr Oren is indeed an inventor and has a moral right to be acknowledged as such. In view that he wasn’t a sole inventor, he received the relatively small sum of NIS 20,000 in legal costs.
One of the issues appears to be whether a the assembler of a multi-part system or method as claimed is the inventor or if, the system or method has a point of novelty that may be conveniently identified by a ‘wherein’ clause in a US patent, or by a ‘characterized by’ statement in a European patent, then the creator of the point of novelty is the inventor.
Clearly the creator of the point of absolute novelty is a contender for inventive step, but is the assembler of the system or method merely implementing and embodying an inventive concept, or is this reducing it to practice? What is the point of invention?
I have a number of issues with the decision.
- The Deputy Commissioner states that the right embodied in naming the inventor is a moral right to be identified as such and there is a public interest for inventors to be acknowledged. It is not clear where the moral right of an inventor to be acknowledged as such is to be found in the Israel Patent Law or indeed any other Israel Law.Let me put it another way – in addition to be an active blogger, I also draft patent applications. I am never acknowledged as the author of the specification. I could argue a moral right to be thus identified under the Israel Copyright Law, but this Law does not cover inventions. Indeed patents and the patent Law are about legal rights and not moral rights and are largely amoral.
- Another issue that I don’t understand is how come Mr Oren had status at all. Up until publication for opposition purposes, patent examination in Israel is an ex Partes procedure. Only on publication, do third parties have the right to oppose a patent issuing.
- Grounds of opposition are given in Article 3 Sections 30-34, and include novelty, patentability and ownership – i.e. title to the invention). See http://www.wipo.int/clea/en/text_html.jsp?lang=EN&id=2364 In other words, even on publication of an allowed application, it does not appear that moral right of an inventor to be named in a patent application can be the basis for opposition.
- Under what grounds can the Israel Patent Office make a declaratory statement of ownership?
The application was apparently allowed under Section 17c of the Law, based on the corresponding US patent no. US 7,374,545, i.e. by conforming the claims and text to that of the US patent. Yoram Alroy – presumably a co-inventor as stated at the end of the decision although his rights to be named as such were also stated as not being within the ambit of the present decision – is mentioned there as the sole inventor. In the US, the inventor(s) are the original applicants, who may then subsequently assign their rights to another entity, often a company. Under labour law, employees may be obligated to do so. That as may be, the ruling dismisses the relevance of the US determination of the inventor since in the States “unlike in Israel, there is no clear difference between applicants and inventors”. I neither understand nor agree with that statement. If the granted patent in Israel was granted on the basis of the US invention, and has identical specification and claims thereto, it should have the same inventors, unless the definition of an inventor is different, or the definition of that invented is different.
It appears that in the US, the identity of the inventor is determined by inventorship of the invention as claimed. One could argue that in Israel the invention is not merely the claims or not just the claims but the “pith and marrow” of the invention. Such a position could be based on the UK Law from which the Israel Law is largely derived. The Deputy Commissioner does not expressly do this, although he examines the statement of invention, the list of figures and the preferred embodiments. It is not clear to me which of these elements or all of the above is, according to the deputy commissioner, the identity of ‘the invention’. Presumably once the invention is isolated, the identity of the inventor(s) may be determined.
- Without a clear statement of what the invention is as far as Israel Law is concerned, the identity of the inventor – moral or otherwise is problematic. Unless it is clear that both the USPTO and the Israel Patent Office are relating to different things – then the indication that the Israel patent has different inventors than the US invention casts a cloud over the validity of the US patent, since in the US, the issue is not merely a moral one, but could indicate patent fraud. It is thus possible, that the actual cost of this moral exercise may be rather more expensive than the damages in Israel.
- In this regard, we note that the ruling mentions in passing at the end thereof, that the company claimed that Mr Alroi signed the new inventor Eli Oren on some document that prevented him from recognition as an inventor and/or that he’d given up his right and/or had some reason not to be credited and / or the time passed had created a bar from raising the issue. The Deputy Cmmissioner does not think these statements are appropriate and that it is correct of the company to hide them. – Maybe, but they are now of record. They are in the published decision. This casts a cloud over the valdity of the US case and perhaps of the European patent as well due to inequitable behavior.
- Ironically, the decision does nothing to clarify the definition of an inventor and the identification of the invention under Israel Law. the question raised is a good one. The answer is less satisfactory.