Israel Patent Application No. 179840 is a patent application for a mattress designed to reduce the probability of cot deaths. It was filed in Hebrew by a pair of inventors, Einat and Moshe Gabai who went on to prosecute their application through to allowance.
The invention relates to a standard crib dimension foam mattress featuring through mattress apertures to prevent carbon dioxide build up around baby’s nose and mouth, which applicants hypothesized could result in rebreathing of the carbon dioxide and asphyxiation. The mattress is covered by a fabric allowing air passage therethrough.
On publication, Aminach, a leading Israeli mattress manufacturer, engaged the services of S.T. Colb, Patent Attorneys and opposed the patent application, claiming lack of novelty, lack of inventive step (i.e. that the invention is obvious) and a lack of utility. Aminach also alleged that the Applicant had failed in their obligation to update the patent office regarding relevant known prior art during prosecution, since there was prior art cited against the corresponding US application that was not submitted to the Israel Patent Office.
In a plucky though perhaps foolhardy development, the inventors fought the opposition themselves, without professional representation. Nevertheless, they managed to show the differences between the claimed invention and the cited art and the Deputy Commissioner Jaqueline Bracha ruled that the claimed mattress was novel and inventive. Furthermore, the inventors managed to convince Ms Bracha that the failure to submit details of the prior art was not willful, and she was prepared to overlook this oversight. However, she was persuaded by a professional opinion submitted by Professor Sivan, a pediatrician, on behalf of the opposers, that the invention lacked utility, since the applicants did not submit any scientific evidence that it worked. Consequently, Ms Bracha refused the patent under Section 3 of the Law.
Professor Sivan argued that sudden infant death syndrome SIDS was not fully understood, but that there was evidence of a correlation between the phenomenon and mothers who smoked during pregnancy and parents who smoked near their babies. Clearly the invention does not address these factors.
The Opposer claimed costs of 141,268 NIS but argued that since the costs resulted from legal advice, the relevant papers were subject to attorney–client privilege. Ms Bracha was unimpressed by this argument, and awarded 5,597 NIS in legal expenses against receipts and 40,000 NIS (a little over $10,000) in legal fees.
As I understand the applicants are considering appealing this decision and I have been approached concerning providing an expert opinion on the relevant patent law, I am refraining from criticizing the substantive ruling at this time.
Regarding the argument of attorney–client privilege extending to legal costs, I think that Ms Bracha was correct not to take the requested fees into account, since the applicants are not able to challenge the sum without a breakdown.
One final comment, filing and prosecuting a patent using professional representation is not cheap and whether or not NIS 141,000 NIS is reasonable for opposing a patent, legal representation concerning responding to opposition proceedings are particularly expensive. Nevertheless, one wonders if MS Bracha’s decision would have been different if the applicants had been represented.
Israel Patent Office Ruling In Opposition by Aminach against IL 179840 to Gabai, 20 November 2012, by Deputy Commissioner Jaqueline Bracha.