This is the first part of a candid review of a two-day seminar titled “The Many Faces of Innovation” that was jointly hosted by Bar Ilan University and Ono Academic College and was held on 5th and 6th of January 2015.
The program, in Memoriam of Alberto Musy, was largely put together by Dr Miriam Bitton of Bar Ilan University who is married to Patent Examiner Noam Markowitz. The cross-fertilization between the Patent Office and the Law Faculty at Bar Ilan has been rather fruitful, and many of the participants seemed rather more interested in their baby daughter Oriah, aged 3 months, than in the presentations themselves.
I missed the first part of the seminar. I’d left enough time to get to Bar Ilan University, but hadn’t reckoned on requiring a lot of time to park and that sign posts pointing to the building number were in the wrong direction.
Oh dear what can the matter be?
I also did not take into account that when I arrived at the building and used the bathroom on the ground floor, that the door would close behind me and would latch closed, with the handle being missing!
In my magic career I’ve done various feats of escapology. I gave up the strait-jacket escape as I have a problem getting into the garment… but that’s another story. Suffice to say, I escaped. How I did so is a trade secret.
I don’t want to laboriously go through all the lectures. I blogged the event in advance as soon as I received an invitation and don’t think that I need to make up for poor publicity on behalf of the organizers or for the practitioners and academics who didn’t bother to attend. Apparently the papers themselves are available. I have asked for access and if I get it, will read and comment on them in more depth.
The first day of the program , hosted at Bar Ilan University, provided a diverse range of plenums (pleni?) titled “Innovation &… where the triple period was a Markush group comprising Competition, Trademark & Design Law, and Patents.
The second day was hosted by the Jerusalem campus of Ono and included an interesting twist with panel 4 titled Copyright, Regulation & Innovation. Panels 5 and 6 were titled “Innovation in Certain Industries” and “Innovation and Different Fields of the Law”.
All in all there were 23 separate presentations about different aspects of innovation, excluding the welcoming remarks and a keynote lecture about Alberto Musy’s legacy.
Some of those dealing with patents seemed unsure of the difference between innovation and invention. This led to a repetitive confusion about whether inventor-innovators are companies or individuals.
I got the general impression that the presenters were engaged in fairly blinkered focused research and were myopic regarding the wider picture. Many seemed to show a lack of robustness regarding their own research. Some ideas seemed half-baked.
Mr Quiang Yu spoke about Innovation, Market Analysis in Merger Control. His English is much better than my Chinese. Nevertheless, focusing on his message was difficult and his constant referral to innowation was distracting. Then Prof Sahil Mehra examined the interesting topic of completion law in a post scarcity world.
Lunch was a high quality buffet provided by Coffee Greg, which has the catering franchise for the Law Department. There was a range of salads, filled rolls (that seemed to be either sliced hard-boiled egg and tomato or sliced hard-boiled egg and tomato), fresh fruit and fancy biscuits, and burekas and rugelach type things left over from the morning break.
In the afternoon, the Commissioner, Adv Asa Kling spoke about the pending Israel Design Law, and how it came about. (Surprisingly, and possibly returning from a Patent Office training seminar, unlike in the photograph and on most of his official appearances, Adv. Kling was not wearing a jacket and tie. Indeed, the informality of the entire seminar was welcome).
Adv Kling described the current (ex-British Mandate) Ordinance and its quaint peculiarities, such as only local novelty being required, and that, as commissioner, he had far wider discretionary powers regarding design regulations than those regarding trademarks and patents, but certain aspects, such as assignments or licensing required deferral to the court.
The commissioner also noted potential problems that the current version of the pending law introduces. For example, unregistered designs will be protected for three years, but how without registration one can show when a design was published was not addressed. With classical copyright, the protection is narrow but long-lasting. It is far from clear how similar an infringing product needs to be to a non-registered design for it to be considered as infringing.
Perhaps unfairly, I asked the commissioner if, despite his view that the commissioner’s powers re design regulations were wider than for patents and trademarks, he considered his predecessor’s widening of local disclosure to include the Internet was ultra-vires. Not surprisingly, he declined to comment. He did, however, opine, that the unregistered design clause was introduced to define and limit the A.Sh.I.R. ruling where the Tel Aviv District Court and the Supreme Court led by then Chief Justice Aharon Barak recognized the tort of Unjust Enrichment as grounds for suing for infringing unregistered designs under certain conditions. I have no doubt that he is correct. However, I think that the Knesset should simply over-rule and reverse the A.Sh.I.R. ruling and note that Unjust Enrichment is not applicable with regard to product design.
Prof Deborah Gerhardt spoke on ‘Thought Leadership Through Branding’. It seems that her field of interest is brands selling themselves as having a social conscience, and using buzz words such as sustainability, third world investment, etc. This is a recent trend that is worthy of research.
Prof Gerhardt noted that brands could create social change, and gave the example of Target and Walmart banning weapons where the United States government seemed unable to act. She gave other examples such as a shoe manufacturer donating shoes to a child in the third world for every pair sold in the West, and mentioned Bumble Bee, an Israel company doing ecologically friendly work. She asked for other Israeli examples which we provided during the break. One of the things that she discussed was mission statements.
I am a little skeptical about these. When my wife was a senior engineer in one of Israel’s successful innovative companies, she was part of a group attempting to define a mission statement prior to an important meeting with investors. She gave me the buzz words and told me what they were trying to achieve and I wrote something that seemed appropriate. When I picked her up from her office a week later I found my sentence nicely printed in the company’s colours on an appropriate background and signed by the president and CEO. I think that in generally, the mission statement of a company is simply a marketing slogan. Nothing more. It does not define the company. In this instance, the company had a real social conscience and positive attitude regarding its employees. It also invested in the local community and I know for a fact that the CEO’s wife was and is involved in a valuable educational initiative that the CEO was largely funding. I think the company and the CEO were doing great charitable things and the company’s product was truly innovative and ecologically friendly and a contribution to human progress. The mission statement, however, was just a trendy marketing gimmick.
There was some talk about brands becoming user experiences rather than merely products.
The talk gave me food for thought. My conclusion (not Prof Gerhardt’s) was that branding and trademarks enable companies to have identities. This enables them to have an impact on policy and to set an example. This also enables them to be held accountable. In other words it was a justification for branding and justified the speaker’s contention that brands can be more than the product itself.
Dr Neil Wilkof (currently lecturing at Herzliya and practicing TM Law at Bressler’s after being early retired from the prestigious Law Firm of Herzog Fox Neeman) spoke about Co-Branding and its contribution to innovation. I understood from his talk that by co-branding he did not mean simply symbiotic advertising. I also understood that his student daughter had messaged him with the question of what ‘co-branding’ meant, so the term is not obvious. The problem was that with so many asides regarding his daughter’s academic career and the elementary schools in Cincinnati that he had attended and one of the visiting academics might have but actually didn’t, and perhaps because though the lunch was great, the coffee was instant/botz, rather than freshly ground, I managed to miss the point of the talk and can’t report what co-branding means and what Neil’s insight into this was!
I regularly read Neil’s posts on the IPKAT and no that his interests are wide. It was clear from his talk that he was a practitioner and there were interesting points to think about such as his noting that in discussion with the branding people at Disney he understood that they had never had a joint meeting with the trademark department. He also mentioned that for a number of years about a decade earlier, he was the IP department at Bar Ilan… I found myself wondering if the change was a positive development or an illustration of Parkinson’s Law.
Dr Michal Shur Ofry (Hebrew University) spoke about Access to Error. She chastised the patent system for only publishing positive results and not the negative ones and focused on the Novartis patent for sildenafil citrate (Viagra) to illustrate the problem she had with the dysfunctional patent system. She expressed the belief that patentees should include their misguided research and should also be more focused on the real results. She simultaneously advocated for greater transparency in patent drafting with all alternatives discussed and for more focused patents. She also suggested that people should publish journals of unsuccessful approaches.
I found the presentation full of internal contradictions, at least on the theoretical level.
I pointed out that the Novartis –Teva decision in Canada brought as evidence of the failure of the patent system was actually an example of where a patent was voided for claiming more than it deserved. As a practitioner who reviews patents in diverse fields (including pharma) I don’t think that professionally drafted patents are generally unfocused, although some are written by incompetents, mistakes happen where the attorney is out of his depth, there is a breakdown in communication between marketing, management, R&D, the patent department or outside contractor.
In the case of pharmaceutical patents, the applicant has to file before publishing, which generally means before exhaustive clinical trials. In the need to prevent a similar but not identical molecule having similar physiological properties from slipping through the net, the applicant generally uses a funnel claiming structure and tries to protect a class of molecules for a behavior displayed by one example. Whether or not Novartis exaggerated in the Viagra patent is not clear. Different courts came to different conclusions. However, it seemed to me that Dr Shor Ofri was citing a single case and using it to tar an industry.
Dr Shor Ofri referred to the USPTO issuing “bad patents” without defining the term. From the discussion, it seems that the alleged problem is that in 50% of patent infringement cases litigated by the courts, the patent is voided. I see this as a perfectly reasonable statistic. It means that in about half the cases where a complaint is filed and the sides can’t reach an agreement, there is infringement and in the remaining 50% of the cases, the patent should not have issued. Very few patents are challenged. I don’t assume that all non-challenged patents are valid. However, one can’t look at those that reach the courts as typical. Furthermore, the cases reaching the courts typically issued several years ago. Searching in the US as elsewhere has become more thorough in the past few years. Whereas in the past, the Examiner only searched US patent records, now other English language patent documents are regularly cited. There is a veritable spaghetti junction of Patent Prosecution Highways, and examiners world wide are sharing data. Scientific journals are also cited and the EPO and USPTO are collaborating on classifying and indexing technical literature. With the duty of disclosure in the US and important patent applications being filed multi-nationally, the US examiner typically has the search results of examiners elsewhere. The percentage of US patent applications issuing has also dropped.
As to publicizing failures – people publish for financial gain or for their reputation (pride, honor). (The third great drive, sex and libido, is of relevance to the Novartis patent, but is less apparent in many other technical fields).
(I do note that I like the title of her 2009 Seminar Paper Hebrew University of Jerusalem—Faculty of Law—Faculty Seminar—”Popularity as a Factor in Copyright Law”).
I am open to be swayed by clear, well-reasoned and well researched presentations. This was an attempt to cast an outlier patent that was voided as an indicator that the system fails. In the forthcoming AIPPI conference, Dr Shor Ofri is giving a presentation on the same topic.
At this stage Professor Martin Adelman stood up and announced that the Canadian judges had got it wrong and everyone except the judges knew that the patent related to Viagra.
The role of a mediator
Professor Martin Adelman chaired the next session. He has been an academic since 1973 and has donated a fellowship to Haifa University. Prior to becoming an academic, he practiced as a patent attorney in the Detroit area. Professor Adelman has testified as an expert on patent law and practice in over 190 federal court cases, written many law review articles, and for 25 years was the sole author of the continuously updated nine-volume treatise titled, Patent Law Perspectives. In addition to teaching international and comparative patent law, intellectual property (IP), antitrust law and a shared course on chemical and biotech patent law with Professor Joseph Straus at George Washington University, Professor Adelman regularly teaches patent law courses at Bar-Ilan University Law School, The Hebrew University Law School and at the Munich Intellectual Property Law Center. Here is someone who understands patents and can read them.
I think Professor Adelman would have been a great lecturer on the program. Instead, he chaired the next session.
As a chairperson, he was a poor choice. Instead of the common problem of not controlling the speakers running to time, and letting things become a shambles, in a manner reminiscent of Dr Abshalom Kor, Professor Adelman spoke far too long when introducing speakers. My first thought was that he was merely overbearing. However, by the end of the session concluded that he was actually heckling his speakers and dismissing their papers on ridiculous grounds like the lack of applicability of a model due to TRIPS, and doing so before they spoke. Sure academic models can be difficult to implement because of international treaties, but these are not cast in stone. Nor is a model that can’t be implemented of no value. That as may be, once someone is invited to speak, the chairperson of a panel should ensure that they can do that. One of the speakers, Professor Emily Michiko Morris actually went so far as to request from the organizers not put her on one of his panels again.
It seemed that instead of the dinner for lecturers being a thank you for their participation, in this instance, it seemed to be the focal point of the conference and Marty felt that the speakers whose presentations were unimportant anyway, should not bother so they could all go to supper instead!
An overall view of the talks is that each one had their own take on regulation, prizes, policy and patents.
The most interesting talk was by Dr Ofer Tur Sinai of Ono College. Citing the US Constitution that “The Congress shall have power . . . . To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” Dr Tur-Sinai acknowledged that the purpose of patents was to promote progress, and instead of going the usual academic route of analyzing to what extend patents achieve this, Dr Tur-Sinai asked whether progress was a good thing or not. In this he relied on utilitarian philosophers who discuss things in terms of happiness and wondered if progress makes one happy. Maybe people want the wrong things?
Surprisingly, William Ludd was not mentioned. Nor was Adam Smith. Nor was the grand experiment between Western innovation and progress and how happy people were in the Soviet Union. There was no attempt to compare longevity, health, rate of achievement or indeed anything else over the past 200 years.
Ofer finished with mentioning that he had seven conclusions but would stop for questions and maybe these would come up. They didn’t and I am left wondering what the Seven Oferite laws, Halacha from Tur-Sinai are. This was frustrating. When I noted this the following day, he denied having seven conclusions.
In some respects Dr Ofer Tur-Sinai’s presentation was blue ocean academia at its best. It attempted to challenge preconceptions and to look into alternative models. In other respects it was what George Orwell meant when he quipped that “Some ideas are so stupid that only intellectuals believe them.”
I note that Bar Ilan has a tech transfer organization called Bar Ilan Research & Development or BIRD that is similar to Ramot, Yeda and Yissum but not as successful or well-known. The staff of BIRD were not at the conference. Either they were not invited or realized that the conference was of little interest. Inventors in the science faculty were conspicuously absent as were faculty members creating commercially valuable literature and artistic works.