Albemarle Corporation makes flame -retardant additions to polymers. Application Number IL 136482 was allowed under section 17(c) of the Law, based on corresponding United States Patent Number US 5,527,971 – a continuation-in-part of WO 96/33964 whose Israel National Phase Entry, IL 117,987 issued in 2004.
Both the subject application and the previously allowed one relate to the synthesis of Tetrabromobiphenol-A by reacting bisphenol-A with bromine in the presence of hydrobromic acid. The parent application limited the amount of free bromine to 20,000 p.p.m., believing that a higher concentration would result in discoloration of the polymer to which it is added. In the second application, it was disclosed that the absolute concentration of bromine could be increased if that of the hydrobromic acid was increased as well. In other words, the free bromine should be limited but the actual amount of bromine may be usefully increased.
Tarkovot Brome LTD. (i.e. Bromine Compounds Ltd.) opposed the second application, claiming obviousness and lack of inventive step over the first application. Albemarle attempted to defend the inventiveness of the application, whilst requesting that the second application be considered a patent-of -addition as a fallback position.
Based on admissions of the expert witness for Albemarle, the Commissioner of Patents, Dr. Noam, ruled that the subject application lacks inventive step. He did, however, allow it to be considered as a patent-of-addition, and awarded partial costs to the opposers.
Interestingly, a 30-year-old district court precedent (the Monsanto case) preventing converting a patent application into a patent-of-addition was over-ruled. The Commissioner argued that the assumption of the courts back then was that the opposition period served the interests of the opposer, by delaying the enforcement of the patent. Nowadays, following the Supreme Court ruling in 2826/04 Recordti Ireland Ltd. vs. Commissioner of Patents, the courts are bound to consider the opposition period as serving the public interest by safeguarding the purity of the patent register.
Since, according to the Commissioner, the standard for patentability of chemical synthesis in Israel is “obvious to try”, and there is nothing really surprising that increasing the amount of bromine increased the rate of the reaction, it seems that there is, indeed, a total lack of inventive step.
Tarkovot Brome (Bromine Compounds Ltd.) is a direct competitor of Albemarle and is probably the reason for the application being filed in Israel in the first place. It is, therefore, difficult to consider them as being motivated by the public interest, although, clearly, anything that restricts a specific patent and allows competitive pricing, serves the public interest.
The improved synthesis is proper subject matter for a patent of addition. I concur with the commissioner that there is nothing in the Law to prevent an application undergoing opposition being reclassified as a patent of addition. The legitimate interests of both sides and of the public seems served by allowing the application to issue as a patent of addition that will run concurrently and terminate with the first patent. A good decision, and a valuable one in that it explains what a patent of addition is about.