What is required to obtain actual and not estimated costs in a Patent Opposition?

Oval Magofim LTD, represented by Mati Barzam, successfully opposed Israel patent application No. 165760 to Alberto Lodolo.

After requesting and receiving one extension to file a response and counter-claims, the applicant filed for a second extension and was refused, and the application was thus dismissed.

The opposer filed for costs, and claimed NIS 50,000, arguing that the legal costs incurred were NIS 35,763.60, to which should be added a further NIS 15,000 for direct costs to the opposer who had to use their own staff to prepare evidence for the Statement of Case.

The lawyer’s invoices were appended to the request for costs, as was an affidavit from the CEO of the opposer who claimed that he or another worker had spent 100 hours in getting material together and in reviewing the opposition statement.

In ruling, Ms Y. Shoshani Caspi considered lawyer’s invoices labeled ‘for patent work’ insufficiently detailed to be clearly linked to this specific case and to explain how the sums reached were justified. Furthermore, the affidavit was also considered insufficiently detailed. One specific point Ms Y. Shoshani Caspi queried was that the CEO detailed reviewing the statement of case. Ms Y. Shoshani Caspi considered this as an additional safeguard but not strictly neccessary. She rejected the actual costs and estimated that NIS 15,000 were appropriate for the amount of work performed.

Costs in opposition to IL 165760 to Alberto Lodolo, opposed by Oval Magofim LTD., 19 September 2011.

COMMENT

Without seeing how much material was filed, it is difficult to estimate how much work went into it, but at a reasonable  IP lawyer’s rate of NIS 1000 an hour, one can assume that the cost of filing an opposition, which requires analyzing the application, reviewing prior art and writing an opposition will take time.

I suspect that the patent office simply weighs the material submitted, and am not sure that the estimated costs are fairer than the requested costs.  That said, the patent office is in the best position to directly compare different cases.

 

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