Patentable Subject Matter and Modified Examination – Israel Commissioner of Patents Clarifies sections 3 and 17c of the Israel Patent Law

parking carReuben and Anne Berman filed a patent application, number 168734 for “A method and System for Charging a Vehicle for Parking”.

The method relates to detecting a parked vehicle, identifying the vehicle, e.g. from its license plate, detecting when it moves on and calculating and collecting a fee for parking. The applicants consider the method an improvement over previous parking schemes as the driver of the vehicle does not have to actively perform an action, and only pays for the actual time parked.

The applicants received a United States Patent No. US 7,466,242. The US claims as allowed are as follows:

  1. A method for charging vehicles for utilizing parking rights in a parking zone, the method comprising the steps of: 
    during a time period, intermittently collecting information of utilizing parking rights by a vehicle parking in said parking zone; 
    after said time period is over, calculating a toll for utilizing said parking rights according to the collected information of utilizing parking rights; and 
    charging said vehicle by said toll.  2. A method according to claim 1, wherein said information comprises an identifier associated with said vehicle, and a time said registering is carried out.  3. A method according to claim 1, wherein said collecting information of utilizing parking rights comprises: 
    photographing a digital image of a vehicle during said time period; 
    decoding an identifier of said vehicle from said digital image by OCR means; and 
    optionally, adding additional information related to said utilizing parking rights. 

    4. A method according to claim 1, wherein said obtaining information of utilizing parking rights is carried out by: 
    transmitting an identifier of a vehicle to a receiving device via communication means; and 
    optionally, adding additional information by a parking inspector. 

    5. A method according to claim 1, wherein said parking zone is selected from the group consisting of: a city, a road, and a parking yard. 

    6. A method according to claim 1, wherein said time period is selected from the group consisting of: at least one day, at least one week week, at least one month. 

    7. A method according to claim 1, wherein said calculating a toll is further based on a parking arrangement of said vehicle in said parking zone. 

    8. A method according to claim 7, wherein said parking arrangement is selected from a group consisting of: a special rate for a vehicle of an habitant that lives at said parking zone, a special rate for a vehicle parking during certain hours of a day, a special rate for a vehicle that its owner pays a fee for utilizing parking rights in said parking zone. 

    9. A system for charging vehicles for utilizing parking rights in a parking zone, the system comprising: 
    an input mechanism, for intermittently inputting during a time period information of utilizing parking rights in a parking zone by a vehicle; 
    a charge calculator, for calculating a toll according to said information after said time period is over; and 
    a clearance mechanism, for charging said vehicle by said toll. 

    10. A system according to claim 9, wherein said input mechanism is selected from the group consisting of: a digital camera, a video camera, a receiver communicating with a transmitter carried by a vehicle and transmitting an identifier associated with said vehicle. 

    11. A system according to claim 10, wherein said input mechanism further comprises input means, for inputting information by a parking inspector. 

    12. A system according to claim 9, wherein said information is stored in a memory until said toll is calculated, said memory is selected from the group consisting of: a database, a file, non-volatile memory, and flash memory.

The applicants amended the claims in Israel to conform them to those allowed in the US and requested allowance based on the US issued patent under Section 17c of the law which allows for modified examination, and frees the Examiner from substantive examination under Sections 4, 5, 8, 12 and 13 of the Law, i.e. novelty, non-obviousness, unity of invention, adequacy of the description and wording of the claims.

The Examiner refused to allow the claims based on both prior art considerations and also considered the invention inadmissible under section 3 of the law which requires claims to be directed to technological inventions. The Examiner considered the invention as a business method and therefore not technical.

The applicants, and at this point I note that Reuben Berman is a patent attorney, appealed to the commissioner claiming that once Section 17c was invoked, objections under Sections 4, 5, 8, 12 and 13 of the Law are irrelevant as the Examiner is no longer allowed to raise them. As to patentable subject matter, the Applicant noted that the USPTO did not consider this a business method, and had no qualms about issuing a patent and requested that the Commissioner should apply similar standards.

In his ruling, Assa Kling, the commissioner of patents held that the Examiners were entitled not to allow patents under section 17c of the Law if they felt it inappropriate to do so.

As to patentable subject matter, Commissioner Kling upheld the Examiner’s contention that the invention was not directed to a technological invention.

COMMENT

In the past, up until Dr Meir Noam’s term as Commissioner, invoking Section 17c generally terminated arguments on the merits as to Sections 4, 5, 8, 12 and 13 of the Law, i.e. novelty, non-obviousness, unity of invention, adequacy of the description and wording of the claims. The patent office was then understaffed and the examiners were over-worked. Over the past decade, examiners have taken the position that allowance in an examining jurisdiction recognized as having appropriate standards for Section 17c was an assumption of allowability that could be rebutted based on specific grounds. I don’t recall any previous ruling of the scope of Examiner’s discretion not to allow patents under Section 17c, but think the Commissioner’s position is correct. An issued patent abroad, or indeed an issued Israel patent is only a presumption of validity that may be overturned by the courts. The Patent Examiner is an IP specialist and has more familiarity with novelty and non-obviousness and if the Examiner considers that a patent is not novel or is obvious, the fact that a patent has issued elsewhere should not overrule his judgment. Certainly I believe this to be the case if the Israel Examiner is objecting based on citations that were not cited in the prosecution of the patent that is used for the Section 17c request, or if a reference is not considered prior art elsewhere (e.g. same inventors under US law) but is prior art under Israel Law. Furthermore, if the Israel Examiner feels that his colleague elsewhere misunderstood the prior art, he should be able to reject the patent on such grounds.

If Commissioner Kling were to reject the patent on grounds of obviousness from the combination of toll roads such as Road 6, and car parks where the driver collects a ticket on entering and pays on leaving, I’d have no problem with his ruling. However, The Israel Commissioner considers the claimed invention as not being technological and thus not patentable under Section 3 of the Law.

Section 3 used to restrict patentable subject matter to agriculture or industry. Under TRIPS it was broadened to allowing patents for any field of technology (except methods of therapy – section 7). The commissioner is arguing, based on the guidelines for examining computer software patents, that under Israel patent law, this invention is not patentable.  I disagree. The method claimed is tied to a specific machine – a car, and to parking zones. I am not arguing that the Israel law requires tying to a machine and accept that USC §101 is different from Section 3, but do consider the claimed invention to be scenario specific and therefore not an abstract algorithm that is a thought process.

The invention is not an invention in the humanities. It achieves a worthwhile result and cannot fairly be dismissed as being a business method. As to the system claims Commissioner Kling is correct that the claimed invention does not have any unique elements, but that is not the point. A unique combination of known components acting in a new way to provide a new end result may be patentable. If Berman has substantive arguments against the prior art obviousness rejections, I think he should appeal the decision to the courts.

One Response to Patentable Subject Matter and Modified Examination – Israel Commissioner of Patents Clarifies sections 3 and 17c of the Israel Patent Law

  1. Benny Attar says:

    There is so much prior art to invalidate this patent it’s hard to know where to start. How about US5905247? Or US7019670? Thats just from 5 minutes browsing. A serious attempt from a competitor to argue the invalidity of this patent would leave it in the dust.

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