Israel Supreme Court Affirms Suspension of Israel Patent Attorney

Zuta

In Appeal 3524-02-17, Judge Avrahami of the District Court of Tel Aviv Jaffa partially accepted an Appeal by Mark Zuta and ruled that though guilty under Section 146 of the Israel Patent Law 1967, he would only be suspended from practicing as a Patent Attorney for two years instead of three. Marc Zuta then requested to appeal this ruling to the Supreme Court.

This is a summary of the proceedings that led to the current request.

Mark Zuta has represented himself throughout these proceedings. He is a Patent Attorney by profession. In 2008, H.H. Azikri approached him and engaged his services to register some designs and a trademark application. However, the client claims that, due to his negligence, their applications were abandoned, which caused them damage. Following this, the client sued Zuta in the Small Claims Court and then filed a complaint against him before the Ethics Committee under Section 146 of the Israel Patent Law. The complainants alleged that, despite having been awarded judgment in the Small Claims Court, they were unsuccessful in enforcing the ruling as the defendant was avoiding them.

The Ethics Committee [MF – Arnan Gavrieli, Michal Hackmey and Stanford T. Colb] gave their decision on 16 October 2012, and found that the Appellant had taken no steps and had not reported Office Actions from the Patent Office to the client that warned that the prosecution should be completed within 14 days, or the applications would be considered abandoned. The Committee found that the cases (design application numbers 46916 and 46918 for a head support cushion and for a nursing cushion, and Israel TM Application No. 217162 which is shown alongside) were abandoned due to his inaction. The abandonment of the design applications was final and irreversible.

217162

A similar situation occurred with respect to the trademark application which resulted in these being struck from the register. However, unlike design applications, trademark applications may be refiled, and Hadas Azikri did this after learning that the marks were struck from the register, expressly cancelling the POA to Zuta.

The Ethics Committee held two hearings, during which they found that the Appellant ‘was not careful to always state the truth’ and that ‘his office management was particularly lacking’. The Committee ruled that the Appellant had not acted properly in that he had failed to inform the complainants regarding the statutory design timetable and had failed to report the Office Actions to the client, and had failed to act to save the design applications and prevent them from lapsing, and had not kept records of the trademark application. The Appellant’s actions could be summed up as “irresponsible in fulfilling his obligations as a patent attorney” in contravention to section 148(a)(3) of the Patent Law. The Ethics Committee ruled that the Appellant could not practice as a patent attorney for three years.

Zuta appealed to the Tel Aviv & Jaffa District Court, and the case was returned to the Ethics Committee with Zuta being given a proper opportunity to cross-examine the witnesses, the District Court not opining on whether or not he was guilty of misconduct (Ruling by Judge Shitzer, Appeal 25906-11-12 from 4 March 2016).

The Ethics Committee reconvened, with former Commissioner [MF – and before that, a Patent Attorney in private practice as a sole practitioner] Dr Meir Noam replacing Adv. Arnan Gavrieli who had since passed away. On 19 January 2017, the Committee gave its ruling and stated that Marc Zuta gave the impression of not being believable, whereas the complainants, who appeared believable, being ignorant of IP law, had engaged a professional to help them register their designs and trademark. Various allegations from the Appellant, such that Mr Zikri was an ‘imposter’ claims against the Committee that they had rejected witnesses and various claims that he had not been able to cross-examine witnesses, were rejected.

The Committee added to their decision that they considered the behavior of the Appellant as inappropriate for that of a Patent Attorney summoned before the Ethics Committee. Inter alia, they noted that the Appellant had failed to respond to questions from the Ethics Committee under the alleged technical justification that the period for questioning him had passed with the first round before the committee; that the Appellant had delayed and tried to freeze the hearing; ignored instructions from the committee and ‘warned the complainants’ contrary to the instructions of the Committee. In summary, the Ethics Committee reconsidered and left the three-year suspension in place.

Zuta appealed this second Ethics Committee ruling, raising various objections. Judge Abrahami then wrote a wide and detailed ruling dismissing Zuta’s claims one by one and also criticized Zuta’s behavior. He dismissed Zuta’s claim that Azikri pretended to be a client; that the Committee failed to inform him of the complaint against him as legally obliged to; that he was bankrupt and the Committee ruling required court authorization that he was bankrupt; that he was not provided an opportunity to cross-examine the witnesses; various complaints against the Committee, including the charge that the Committee was in conflict in that it consisted of his fellow Patent Attorneys who were his competitors.

The court upheld the significant criticisms against the Appellant serving as a Patent Attorney, and criticized his behavior before the Ethics Committee, including his behavior with respect to the witnesses and to the Committee, behavior that gives rise to “uncomfortableness, to put it mildly”, as the District Court put it.

The District Court explained the responsibilities of a Patent Attorney, and noted that the Attorney in question refused to acknowledge that his behavior was flawed. Despite this, the District Court saw fit to shorten the suspension from three years, taking into account the age of the practitioner who was apparently born in 1951.

Marc Zuta submitted a Discretionary Appeal to the Supreme Court.

The Appellant, who was not represented, raised a host of allegations, including the claim that the issuance of two ‘conflicting’ rules shows that there is a legal issue that requires clarification; and whether his appeal to the District Court should have been considered a civil or criminal matter, that the Disciplinary Counsel misunderstood the evidence that the Disciplinary Committee has no authority to decide whether evidence is reliable or not, and that his client was Mrs Azikri and not her husband. The Appellant alleges that his appeal to the Supreme Court fulfils the criteria for a Discretionary Appeal  in a ”court of third instance”, particularly since the two rulings were contradictory and the first court ruling “cancels” the decision of the Disciplinary Committee, both the first ruling, and the second ruling given afterwards.

Judge Amit ruled that the request for a Discretionary Appeal should be rejected without requiring comment. He went on to add:

As the Appellant notes, the Appeal is a Discretionary Appeal in a court of third instance and so has to fulfill the standard set in Appeal 103/82 Haifa Parking Lot vs. Mazat Or, (Hadar Haifa) p.d. 36(3) 123 (1982), under which permission for a further appeal is only given in cases where there is a legal issue or one of public importance that goes further than the interests of the Appellant. See for example, the decision of Deputy President Amnon Rubinstein in Discretionary Appeal 4252/16 Algeli vs. The Civil Service 12, 5 July 2016 which relates to the right of appeal to the Supreme Court of District Court rulings on appeal of decisions by the tribunal for proper behavior of civil servants. See also the ruling of (then) Judge Meltzer concerning the Discretionary Appeal 3553/10 Abad El Salam vs. The Minister of Health of the State of Israel from 25 January 2011 which considered the Discretionary Appeal  of a District Court ruling on Appeal concerning a decision of the Ethics Committee of the Dentists’ Ordinance, and in contrast, the request for Discretionary Appeal  in a fourth instance concerning 1958/09 Berry vs. The Tel Aviv District Committee of the Israel Bar, decision 7, 10 May 2009.

The current request for Discretionary Appeal does not fulfill the criteria of cases where such an appeal was allowed. As noted by the District Court, there have only been rare complaints against Patent Attorneys, and the Ethics Committee has only convened a handful of times (section 38 of the second court ruling). Even if Judge Amit were to assume, as the Appellant alleges, that his case was the first time that a Patent Attorney Ethics Committee ruling was appealed to the District Court, that is not enough to make this case exceptional and warranting consideration by a third court and as extending beyond the interests of the parties.

The Appellant’s allegation that there is a ‘conflict’ between the first and second rulings, and that this raises legal issues is baseless. The first ruling only considered whether the Appellant had the opportunity to cross-examine the plaintiffs.  That decision ensured that the Appellant had the right to defend himself, and the court noted that the referral of the case back to the Committee was not an indication that their findings were wrong. There is nothing in the first ruling to indicate that the first decision of the Committee was in any way wrong, and, despite the Appellant’s assertions, there is absolutely nothing in it that can be used as the basis for voiding a future decision that was given later.

The Appellant’s question of whether the District Court should have considered the case under civil or criminal law should also be rejected. Firstly, had the Appellant considered that a criminal proceeding against himself was in order, he should have raised that issue with the District Court and not raised it for the first time before the Supreme Court. That as may be, the claim is baseless. Appeals of professional tribunals are not considered as criminal appeals, and in Discretionary Appeal 3553/10 Abad El Salam vs. The Minister of Health of the State of Israel from 25 January 2011 Judge Meltzer specifically ruled that the Appeal was a Discretionary Civil Appeal, and both Section 51 of the Dentist’s Ordinance and Section 149 of the Israel Patent Law use the same language, regarding the right of appeal.

As to the other quibbles such as the identity of the client, and that the Committee was not interested in his practicing as he was bankrupt, this is a case-specific detail that does not justify allowing a second appeal.

At the end of his appeal, the Appellant complains about the seriousness of the punishment. Whilst this can adversely affect his income, this is not grounds for granting a second appeal. As ruled more than once, the Supreme Court will not reconsider appeals against Ethics Committees, except in instances where the punishment is significantly different from the norm, where there is a judgmental flaw or where the punishment clearly misses its intent. (See re Salim paragraph 8 and references there). Judge Amit is not convinced that the current instance falls in this category. Both the Ethics Committee and the District Court noted that the Appellant acted problematically and leaves an untrustworthy impression, that he mismanages his office and has neither regretted nor internalized the seriousness of his actions. It is also worth noting that the District Court did consider the seriousness of the punishment and shortened it, acting with clemency and leniency like the School of Hillel [MF – In late Second Temple times, there were two schools of religious thought: the School of Hillel and the School of Shammai. The School of Hillel was known for its more lenient approach to Jewish Law]. In the circumstances, it is not appropriate to allow a further appeal.

As an afterthought, Judge Amit raises the issue of whether Patent Attorneys who are bankrupt should be able to practice, since the Code of Ethics for Lawyers Section 48(3) prevents bankrupt lawyers from practicing.

The Appeal is rejected and Marc Zuta has to pay 3000 Shekels costs.

Ruling by Judge Amit of the Supreme Court refusing to Reconsider the Appeal by Marc Zuta of the District Court’s ruling on Appeal of the Sanction imposed by the Ethics Committee, 22 March 2018.     

COMMENTS

It seems reasonable that a Patent Attorney who is the subject of an official complaint (or his legal representative) be able to cross-examine the complainant(s).  The first Appeal was justified. The second was not. Nor was the request for Discretionary Appeal.

I take a dim view of Patent Attorneys or indeed Attorneys-at-Law representing themselves in court. However, I suspect that proper legal counsel could have raised some interesting and valid legal points that require clarification. However, according to the second District Court ruling, Marc Zuta was born in 1951, so is now 69. He has successfully postponed his suspension by six years. Had he been successful in having his Appeal heard by the District Court instead of dismissed, he could have carried on practicing for another few years, and has achieved this without the expense of professional counsel, which, if bankrupt, he may be unable to afford.

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Marc Zuta describes himself as a Patent Expert on his website. He also awarded himself a medal. He claims to be able search provisional patents for free, whereas I do not believe that provisional patents are searchable as they are not published (unless relied upon in a regular patent application). He also claims to be ‘the leader in Israel in Scientific patenting, using High-Tech Patentics (patents pending)’. However, this is NOT patent pending. The patent application published as US2009063427 but was abandoned in the US in 2011 and he lost on Appeal in the UK. (We note that Marc Zuta does have other, issued patents to his name).

Perhaps, most oddly, in the section titled About Us, Zuta announces Michael Ophir, a former Patent Commissioner as being of counsel. Whilst he does note that this is In Memory, he uses the term ‘has been working’ and ‘has’ when describing Ophir’s qualifications, which implies that he is still with us. Former Commissioner Michael Ophir (Martin Oppenheimer) passed away in 2012. As far as I recall, after retiring from the Patent Office, Michael Ophir was of counsel to Colb. He may have given some advice to Marc Zuta as well but, despite his 25 years in the Israel Patent Office and his about a 1000 decisions, of which only three were overturned by the Supreme Court, one assumes that over the past six years at least, he has not been a resource that Zuta could draw on.

The six-year delay due to these appeals, during which Zuta has continued to practice is a travesty. As of today, on his websites he describes himself as being an expert Patent Attorney and he claims to be licensed. Indeed, he claims to be Examiner of Patent Attorneys by appointment of the Minister of Justice and an expert consultant to the Government and District Court.

Judge Amit raises the issue of whether Patent Attorneys who are bankrupt should be able to practice, since the Code of Ethics for Lawyers prevents bankrupt lawyers from practicing. This implies that he considers that the Code of Ethics for the two professions should be similar.  Despite believing that the proposed Code of Ethics for Patent Attorneys should include provisions to ensure ongoing training, I do not believe that the outdated code for Attorneys-at-Law is the correct model to adopt. However, preventing bankrupt practitioners from practicing seems reasonable as Patent Attorneys are responsible for handling international patent budgets, and their associates and clients are entitled to assume that there is no evidence of the legal representative having shown the inability to handle finances responsibly.  Arguably, however, bankrupt Attorneys (Legal and Patent Attorneys) should be allowed to practice if they inform clients of their financial situation. That way clients would not pay up front and might pay associates directly, but the Attorney would have a chance to work off his debts.

There are legitimate criticisms that can be raised against self-regulation of any industry including that of Patent Attorneys. Indeed some criticisms have been raised against the examination committees that issue the exams for qualifying as an Israel Patent Agent. However, I note that licensed Patent Attorneys do need to have trained for at least two years under licensed Patent Attorneys having at least three years post qualifying, and to have passed written oral exams.  Licensed practitioners are regulated to the extent that they can be sued, need professional insurance to be able to pay for mistakes that can and do occur, and can lose their licenses.

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I firmly support regulating the IP Profession. My thoughts may be found here. My problem is that in addition to licensed Patent Attorneys who could lose their license, there are a bunch of non-qualified practitioners who also award themselves titles such as ‘expert’ that provide services for which they are not licensed. I have discovered such cowboy firms as being the address of record with the Israel Patent Office. We also have a bunch of US patent and law firms practicing IP in Israel. Some of these use advertizing tools that are against the Code of Ethics of the Israel Bar which they are formally obliged to follow. Non-licensed practitioners in Israel may also be formally bankrupt.  In my opinion, enforcing a suspension against a licensed practitioner who has been negligent is reasonable if non-licensed practitioners are also disciplinable in a similar manner. Otherwise, this is simply discrimination against those that are qualified.

Some additional thoughts:

Over the years, just about every firm of Patent Attorneys has missed deadlines, including non-extendible deadlines. See hereherehere and here for some examples. I also have examples of the Israel Patent Office having misfiled papers sent to it. Mistakes do happen. Whether or not the firm is large or small, uses manual docketing or computer docketing, mistakes happen. That does not mean that they are acceptable. However, I expect many of my peers on reading this post are thanking their lucky stars that when they missed a deadline, their clients accepted their apologies and a refund or whatever, and did not complain to the Ethics Committee. It is possible that in this case, the Attorney did not take responsibility and that resulted in him being sued and a complaint being filed to the Ethics Committee. If he failed to show remorse and take responsibility, this could have triggered the Ethics Committee imposing a rather stiff sentence.

The report above is essentially a verbatim translation of the Supreme Court ruling, with a couple of added details, such as the application numbers and the goods in question. From reading the District Court decision, it appears that Marc Zuta could have paid back the filing fees and avoided being sued, and could have paid back the money after losing in the Small Claims Court and then no complaint would have been submitted against him.

In the Ruling of the District Court it seems that Marc Zuta complained that the Ethics Committee did not keep the matter confidential. I find that wholly believable. In my early days of blogging, I wrote something that Dr Meir Noam, as Commissioner, considered was disrespectful of the Israel Patent Office and he notified one of the members of the Committee who spoke to me, I apologized to Dr Noam, and since then have been more careful. The committee member handled the incident with reasonable sensitivity and care, but at a convention abroad a few weeks later, one of her work colleagues, who was not a member of the committee, mentioned the case to me. She had evidently discussed it with her colleagues which was unethical and wrong.

Most correspondence nowadays is by email and so generally Patent Attorneys have full records of reporting Office Actions to clients. Clients do, however, sometimes deny having received communications. Indeed, amongst those looking for IP services, there are a number of eccentrics. Once one has started to help someone in this category, it may be difficult to terminate the relationship. On one occasion, I was asked by an existing client to help a couple who needed a patent filed that same day. They paid up front, so I took their disclosure and claims, printed it out (back in the day when submissions were on paper) and added a few additional claims on my own initiative, filed, obtained a filing date and number and went back to them with the filing certificate.  I then heard some interesting conspiracy theories involving foreign agents trying to steal their invention. I told them that I had added some claims which I felt was justified and necessary, but could remove them at no additional charge, but would need them to sign the Power of Attorney which I gave them. Their response was that because of my initiative which could cause untold damage, I no longer represented them. I told them that I would happily transfer the address-of -record to them or to a different Attorney, however I needed them to sign a Power of Attorney to be able to do anything. Instead of signing the POA, the couple decided to go to the Patent Office themselves, spoke to an Examiner and then told me that they had sorted everything out, and I no longer represented them. I told them that despite their efforts, I expected that the Notice Prior to Examination would be sent to me, as I remained the address of record until a fee was paid for changing this. They subsequently requested that I withdraw the application.  However, as I explained to them, I could not do so without a Power of Attorney. I was in limbo, They wrote a letter to the Patent Office, copied to me, withdrawing the Application and ordering the Patent Office not to send me anything. Nevertheless, as I remained the Agent-of-Record, I wasted a lot of time forwarding the Notice Prior to Examination, and then the Notice of Abandonment. None of their direct actions had any effect, and there was nothing I could do without a POA, apart from forwarding the documents and trying to explain why I remained the address of record.

Clients sometimes ignore deadlines and reminders as the application is no longer of interest and/or they have run out of funding, and then a couple of years later, when suddenly there is some interest again, perhaps because of discovering an alleged infringer or something, the client blames the attorney for their case lapsing.

As with all court rulings, I can only report the findings of the court. I have linked to the District Court ruling and that of the Supreme Court. I do not know if, in this instance, the Attorney-of-record was indeed derelict in his duty.  If, however, he did receive three separate letters referring to three separate cases and failed to pass them on, this is inexcusable.



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