Service Inventions – Report of a Hearing Behind Closed Doors

The Israel Patent Office has published a highly censored report of a hearing concerning Invention No. XXX, filed on 29 November 2004 filed by a Mr Ronen Harel (Hamami). Mr Harel was a bomb disposal expert (sapper) working for the police bomb disposal group and the Israel Police and the State of Israel claim that the invention is a service Invention owned by them as his employer. 

Where an invention is considered of national security, filing abroad is prohibited and the application is kept secret. There is, however, a committee that decides on compensation to the patent owner. The first question, therefore, is who is the owner of the patent? A second issue is whether compensation is due.

The legal question is whether the invention is a Service Invention under Section 132 of the Israel Patent Act 1967. The Commissioner of Patents has the authority under Section 133 of the Patent Law to decide this issue if the parties appeal to him. There is a royalties committee that decides on appropriate compensation for Service Inventions.

In addition to relating to the issue of employer – employee inventions and the ownership of patents developed by State employees, the particular development in question apparently relates to bomb defusing and has security ramifications and so the hearing was carried out behind closed doors and the ruling has the frustrating characteristic of having the juicy bits blacked out. The invention certainly has something to do with explosives but it is unclear exactly what and how it works. 

Thus we learn that in or around 1995 – 1996, the Inventor started working in the XXX facility on development of innovations.

A particularly informative sentence goes like this:

The title of the invention is “XXX”. There is no disagreement that the invention relates to explosives and specifically to “XXX”.

Although the State acknowledges that the Law provides compensation to inventors of State Inventions, the interpretation of the case-law is not overly generous to the inventors and the State also argues that such inventions are generally the result of team effort.

The inventor claimed to have developed the invention on his back veranda in 1996 and that for the first time the innovative development allows XXX (frustrating isn’t it?)

Supported by his immediate superior, the inventor claimed to be the initiator of the development and that after he filed the application himself, the onus was on the State

What is interesting about the case is that the arguments raised are exactly those raised abroad regarding academic inventions. The inventor claims that his job was not to invent, that he developed the invention at home on his balcony, that the onus is on the employer to prove that he was contractually required to transfer all inventions, that he’s developed the idea with his private money, that his job description didn’t include inventing. The State argued that the inventor turning to private contractors was a criminal act, and that policemen and security personnel were defined as such also when off duty. They brought various deputy commissioners and chief inspectors to testify as to the norms in the unit and showed that the field officers were trained in the theory and consulted with regards to developments and were encouraged to innovate.  

The Commissioner of Patents asserted that the officer did take work home and did routine paperwork on his home computer, thereby rendering the fact that the invention was apparently developed at home, not decisive. The various procedures of the unit made it clear that development was part of the job.

The commissioner ruled that the invention was to be considered a service invention and State property. In view of the effectively unlimited resources of the State to fight such actions, he limited the costs awarded to NIS12,000 (about $3500 US). The decision has been referred to the committee that handles royalty and compensation issues.

The decision, was published recently in May, but dated 8 December 2010. I assume that the ruling was referred back to the Ministry of Defence for censorship before publication and this resulted in the 6 month publication delay.

I hope that the invention is implemented and saves lives.



Categories: Intellectual Property, Israel, Israel Patent, Israel Patent Office Rulings, Patents

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  1. Does a former Employee Have Inalienable Rights to Royalties in a Service Invention? | The IP Factor

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