Allegation of Verbosity not Enough to Have Patent Cancellation Proceeding Stayed on Technicality

statement    Briefer briefs

Alkermes Pharma Ireland LTD and their exclusive licensee Novartis Pharma Services have two patents in Israel: IL 179379 and 142896, both titled “MULTIPARTICULATE MODIFIED RELEASE COMPOSITION”. Medice, a competitor, initiated cancellation proceedings.

In a preliminary hearing on 5 June 2013, the parties were requested to present their amended statements of cases as promptly and briefly as possible. On 31 July 2013, the Opposer, represented by Adv. Matti Barzam, filed a long-winded amended statement of case with an affidavit of an expert, together with an apology for the wordage.

The patentee, represented by Dr.  Shlomo Cohen Law Offices, requested that the case be dismissed, or at least that the opposer file a briefer statement of case brief, as the thick file presented did not fulfill the requirements under the regulations or under the interim ruling to provide a succinct  statement of case.

Where an issue like this is raised, the adjudicator, in this case, the commissioner, has to issue an interim judgement. Accordingly, the commissioner, Asa Kling, noted that the complain was general and did not point to any particular section as superfluous and went on to cite the Head of the Supreme Court Asher Grunis in the Anton Hubner ruling to the effect that one has to give counsel the benefit of the doubt that the statement of case will be of appropriate length, or at least not excessively disproportionate from the norm.

Commissioner Kling acknowledged that it was doubtful whether the Opposer had done their best to keep things reasonable, but without specific criticism from the patentees, he could not address this substantively. However, after hearing the case he would reconsider this point when granting costs.   Nevertheless, in view of the large amount of material, he granted patentees three months to respond.

COMMENT

The decision is  a wise one.

There are certainly lawyers and patent attorneys who write extensive, long-winded paragraphs where a sentence would do just as well. Indeed, one Israel firm appears to draft patent applications by weight. As long as there are clients that are lack sensitivity to quality but are impressed by thickness, perhaps through sympathy, I suspect that legal documents will be longer rather than shorter. We note that Weizmann’s patent for synthesizing Acetone was two sides and one figure. The advent of the word processor changed all that, This interim decision is two sides, including reference and quote from sources. Some decisions from the patent office also seem a little longer than necessary.

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