Tnuva vs. Strauss – Can an Interim Decision not to Allow an Amendment to an Opposed Patent be Appealed by Right Prior to the Main Ruling Issuing?

YOLO 2

This Supreme Court Ruling clarifies that interim rulings regarding amendments to the application within the framework of an Opposition proceedings, are part of the opposition proceedings and can only be appealed immediately if authorization to appeal is given. After the main decision issues, the interim rulings can be appealed as of right. The case in question relates to Israel Application No. 231713 for the chocolate pudding Yolo.

Judge Fogelman of the Supreme Court sums up the legal issue in this case, as follows:

  • A company wished to register a patent for its invention and another company objected, and so an objection proceedings took place before the Commissioner of Patents. During the proceedings, the Applicant requested permission to correct the specification. The Commissioner refused, and the opposition proceedings continued. The Applicant wishes to appeal the refusal to allow them to correct the specification at this stage, before the final ruling. Section 174 of the Patent Law 1967 states that one can appeal as of right “a ruling by the Commissioner that closes the discussion before him”, but one needs permission to appeal “a ruling by the Commissioner that does not close the discussion before him”. How should the refusal to allow the amendment be considered? This is the issue in question.
  • A patent provides a monopoly over the invention and its usage for a limited period to the patentees. See section 49(a) and 52 of the Law and Appeal 2826/04 Commissioner of Patents vs. Ireland Ltd. Recordati, p.d. 59(2) 85, 94 (2004). In compensation for this monopoly, the patentees reveal the invention, and place it in the public domain after the patent lapses (see 217/86 Shechter vs. Ambatz ltd. p.d 44(2) (1990); Warner Lambert vs. Generics UK ltd. [17] UKSC 56 (2018). Chapter 3 of the Patent Law regulates the process of obtaining a patent, and the main steps are as follows: The applicant or his representative submits a patent application. The Commissioner examines it and decides if it is patent-worthy. If allowed, the Commissioner relates to any patent oppositions submitted, and if these are overcome, issues the patent. If there is no opposition or the applicant overcomes any oppositions, the Commissioner issues the patent.
  • On submitting the application, the inventor makes the invention of public record in the paperwork submitted. To define the patent, the applicant submits a specification with claims appended. It is the claims that define the scope of the patent monopoly. The scope of the protection is influenced by the degree of inventiveness and the contribution that the patent makes to the field (see Sections 3, 11, 12a, 13 and 49a of the Law, Appeal 345/87 Hughes Aircraft Company vs. State of Israel, p.d. 44(4) (1990); Appeal 407/89 Zuck Ohr ltd vs. Car Security ltd,  p.d. 48(5) (1994). The patent examination is based on the documents submitted (Section 17a of the Law). The patent law is not intended to grant a monopoly for an invention that is not patentable. One of the features that prevents this is the inter-partes opposition proceeding defined in Section 30-31 of the Law under which any third party may oppose a patent issuing. See re Schechter. One wishing to object to a patent issuing can rely on the specification as providing grounds for opposition. (Section 31(1) and (2) of the Law). From the above it is clear that the patent specification has importance and the documents thereof have to be accurate.
  • Due to the importance of the patent documentation, the Law provides instructions for how these can be corrected.  The applicant is allowed to make corrections to the specification and to the claims without obtaining permission to do so, at any stage prior to allowance (section 29 of the Law). After the patent is granted, the patentee can still request permission to correct the specification (section 65). If there is a legal proceeding, the patentee can request that the Court orders a correction (section 190). The amendments that require authorization after the patent is allowed, after the patent issues, and during legal proceedings, can be requested on two grounds. The first is to correct a scribal error [perhaps typo is a better term – MF]. The Commissioner or the Court will allow this if they are convinced that the error is merely a scribal error. The Commissioner can even take the initiative to have an error in the specification corrected (with applicant’s or patentee’s consent thereto) under Section 69 of the Law. The second ground is a minor amendment, to clarify or to remove a mistake, or an amendment that narrows the scope of the claims and does not introduce new subject matter (Section 66 of the Law). Anybody can object to an amendment of the clarification or claim narrowing type (section 67 of the Law. However, once the application/patent is amended, the amended version is considered as if it had issued in that format (section 71).
  • Anybody may oppose a patent issuing within three months of it publishing as having been allowed (section 30). There are three grounds for opposing a patent issuing: (i) the Commissioner should have refused the patent, (ii) the invention is not patentable (iii) the Opposer and not the applicant is the owner (section 31 of the Law). The Commissioner will consider the Opposition and rule on it. (sections 32-34).
  • The Commissioner is authorized to rule on the various requests mentioned. This authority may be delegated to the Deputy Commissioner (section 1, Section 158c) or to the Adjudicator of IP Disputes (section 172a). Although the Commissioner is a government authority, the decisions regarding such amendments are quasi-judicial (see Oil States Energy Servs. LLC 138 S Ct. 1365 (2018) for a comparable authority) in the sense that his rulings may be appealed to the District Court. Appeals, either by right or with permission depending on whether the proceeding has finished (section 174 of the Law). Under Regulation 192 of the Patent Regulations 1968, the Appeals process is similar to that against a ruling by a Peace Court [lowest court – sometimes erroniously referred to as a magistrate’s court – MF].
  • After a patent is allowed, occasionally there is an opposition or a request to amend the specification. The Commissioner considers such requests. Regulation 102 dictates the formalities governing the proceeding. In essence it ensures that both parties are aware of the developments and are actively involved, and requests to correct are given precedence over the ultimate ruling in Oppositions. There are several scenarios under which oppositions to patents issuing and requests to amendment patent specifications and claims can occur. The request to correct the application can occur first, and subsequently, whether connected or independent to this, an opposition may be submitted, or an opposition may be filed that results in a request to amend the specification. The case before us is the second type and is the one to which this decision relates. Other scenarios may have resulted in different decisions, as will be discussed hereinbelow.

Summary of the Facts and the Previous Proceedings

YOLO

On 26 March 2014, the applicant submitted Israel Patent Application No. 231713 for a process for manufacturing a chocolate pudding and a chocolate pudding -“Yolo”.  The patent application was allowed and published for opposition purposes on 29 January 2014, and the Opposition was submitted on 29 April 2015, and on 29 July 2015 the detailed grounds for the Opposition were filed. Strauss claimed that the Specification was misleading regarding its citations and the prior art, the specification was laconic and lacking information, and the claims lacked novelty and inventiveness. The Applicant responded on 29 February 2016.

amendment

On 9 May 2016, the applicant submitted a request to correct the specification under Sections 29 and 65 of the Law and under Regulation 102. The amendments requested included one to clarify and to overcome the alleged lack of significance, one to remove a characteristic of one of the claims allegedly lacking significance, with corresponding deletion of dependent claims and correction of the dependency of other claims; a narrowing of the scope of one of the claims, and two corrections that were essentially corrections of errors in the specification. On 10 July 2016, the respondent opposed the corrections, apart from one relating to an error in the specification. On 9 October 2016, the applicant responded to the opposition to the amendments. The respondent submitted two affidavits on 20 March 2017, and on 9 April 2017, the applicant requested that the affidavits be struck from the record. On 11 May 2017, Deputy Commissioner Jacqueline Bracha refused the request to strike the affidavits, but allowed the applicant to file evidence in response. On 13 August 2017, the Deputy Commissioner allowed amendments to the specification that were correction of obvious errors but refused the other amendments.

appeal.jpg

The applicant appealed the refusal and the deletion ruling to the District Court on 15 October 2017. In the Appeal notice, the applicant claimed that they had the right to appeal the amendment ruling, and the decision not to strike the affidavits could also be appealed, since they were interim rulings of the amendment decision. In the alternative, they requested permission to appeal. On 30 October 2017, the respondent (Opposer) requested that the two rulings be considered ‘other rulings” of the type requiring permission. On 14 December 2017, the applicant responded, and the respondent replied on 4 January 2017. On 9 January 2018, Judge Jacobi of the Jerusalem District Court ruled that there was no justification to give permission for the Appeal, and at the end of the proceeding, the applicant could then appeal the interim decisions by right. It was also stated that if during the Opposition an interim ruling should issue concerning the opposition to the amendments, the applicant could appeal those at the discretion of the Court. It was decided that this case falls in the category of a decision in an ongoing proceeding, and the Court noted that opposition before the Commissioner of Patents should proceed without delay, without undermining it or complicating it with interim rulings. The Court added that it was difficult to allow a decision regarding striking of material to be appealed, since doing so would create significant delays as the respondent had asked for an extension to file a counter-appeal.

The Claims of the Parties

claims

The applicant submits that the process of correcting a patent is always an independent process, so appealing it is a matter of right. This contention was supported by the applicant noting that amendments are governed by Chapter 4 of the Law, whereas the opposition procedure is Chapter 3 of the Law.

rights

The applicant adds that were he to have submitted the application to amend the specification in a separate proceeding, he would have been able to appeal as of right, and the fact that the amendment was submitted within the context of an Opposition should not change this. Furthermore, the general rule given in Section 174 of the Law, as in the original version, allowed appeal by right, and the requirement to obtain permission to appeal ‘another decision’ is an exception to the rule. The applicant claims that Regulation 102 of the regulations is intended to synchronize applications to amend the specification with the opposition proceedings, and this cannot be used as grounds for not following the Law. Furthermore, one can consider the decision to amend the patent as being a ‘partial ruling’ that one has the right to appeal. The applicant stresses the importance of the right to appeal. In the alternative, should it be determined that one needs approval to appeal the ruling concerning the amendment, the applicant claims that they deserve to be allowed to make the amendment, and the District Court had simply ignored the justifications submitted. Furthermore, if the Application is not amended, they could find themselves without a patent application at all, or without a patent application that provides real protection for their invention, and this would result in irreversible damage.

discretion

The respondent claims that permission is required to appeal a ruling concerning permission to amend the specification. They claim that the development of Section 174 of the Law teaches that the permission to appeal is not an exception, but rather the general Civil Law procedure that governs appealing decisions and other rulings applies. They allege that amendments made within the framework of an opposition proceeding are an integral part of that opposition proceeding, and a decision regarding the amendment does not close the discussion, and so it cannot be appealed as of right. The respondent alleges that all the courts that have related to this issue have found this to be the law. Only at the end of the Opposition process does the applicant have the right to appeal all the interim rulings and in the meantime, they have to obtain permission to appeal. Furthermore, the respondent considers that the present ruling is not a partial ruling that can be appealed. They consider that the District Court sufficiently detailed their ruling, and were correct in denying permission to appeal and to interfere with the decision by the Deputy Commissioner. The respondent claims that if we assume that appeal is at the discretion of the court, the period for appeal has passed, and so the request to appeal should be thrown out.

On 31 May 2018, the applicant was invited to respond. They claimed that the decision regarding the request to amend the specification closed that part of the proceeding and so they can appeal as of right under Section 174a of the Law. They clarified their arguments regarding the structure of the Law, refusal of the right to appeal, Regulation 102 of the Patent Regulations and a comparison to partial rulings. The applicant further alleges that they deserve permission to appeal and that evidence to this effect that was submitted in the request to cancel could be relied upon.

On 31 May 2017, the Attorney General (legal advisor to government) was invited to lay down their position regarding this issue. The Attorney General responded on 23 October 2018, that they would join the discussion and submitted their position, but only related to the issue of how the refusal of permission to amend the specification should be appealed. The Attorney General alleged that the Commissioner of Patents is a quasi-legal tribunal, and as far as appeals were concerned could be considered as being the equivalent to a peace court. Consequently, the term “other decision” should be defined in a similar matter to its meaning regarding decisions of the Magistrate’s Court. The Attorney General continued that the decision regarding an amendment within the framework of an Opposition does not close the main case and so is “a different decision” that can only be appealed at the discretion of the court. The Attorney General supported his position with reference to the underlying rationale of Section 174 and of regulation 102, which is the efficiency of the process.

On 22 November 2018, the applicant submitted a response to the Attorney General’s position, after receiving permission for so doing. The applicant reiterated their position that the request to amend the specification was a separate procedure under Section 174 that was independent of the Opposition. They continued that the decision determines the fate of the opposition, and so if this is a case that requires permission to appeal, it should always be given. The applicant further submitted that Regulation 102 collects together independent proceedings and does not make any one subservient to any other, and anyway, it predates the current version of Section 174, so does not support classifying the decisions as a single ruling.

Discussion and Ruling

After considering the Statements of Claims and their appendices, Judge Fogelman concluded that he should consider the request to appeal the decision as a question of how one should appeal a decision regarding an amendment as if permission was granted and an appeal was filed in line with that permission. As known, the right of Appeal is a third incarnation that the Supreme Court gives in rare cases where there is a basic underlying principle that is separate from the narrow specific case under dispute (See 103/82 Haifa Car Park ltd vs. Netset Ohr (Hadar Haifa ltd. P.d. 36(3) (1982)). This is the case with second appeals of Patent Commissioner’s rulings as well, while noting the specialist nature of these – see Appeal 1867/17 Novartis AG vs. Commissioner of Patents, 8 November 2017. The question of how to appeal a request to amend the specification within the framework of an Opposition has not previously been considered by the Supreme Court, and may have relevance to further cases. So, Judge Fogelman has decided that it is appropriate to consider this in detail.

Section 174 of the Law states which Commissioner rulings can be appealed by right and which can only be appealed at the discretion of the Court:

(a) If a person deems himself injured by a decision of the Registrar in conclusion of hearings in a proceeding before him under this Law, including a decision not to hear him under section 159, then he may appeal against it before the Court within the prescribed time. (amendment no. 2) 1995

(b) If a person deems himself injured by any other decision of the Registrar under this Law, then he may appeal against it before the Court after being given permission to do so by the Court or by the Registrar.For purposes of this section, “other decision” – any other decision that does not conclude hearings in a proceeding held before the Registrar.

The Decision regarding amending the specification closes discussion regarding the present application. What happens if the decision regarding the amendment is part of an Opposition proceeding? To rule on this, the term proceeding as it appears in Section 174 has to be interpreted. The respondent and the Attorney General submit that the correct interpretation is the patent Opposition proceeding. The applicant considers that the amendment is a separate proceeding, regardless of whether it is independent or part of an Opposition. Judge Fogelman considers that, linguistically, both interpretations are possible.

When considering the underlying rationale for appealing Commissioner rulings by right and appealing at the Court’s discretion may be understood from Section 174. In the past, all Commissioner decisions were appealable as of right.:

One who sees himself damaged by a Commissioner decision under this Law, including a decision not to hear him under Section 159, may appeal the ruling to the Court within the prescribed time interval (section 174 of the Patent Law as it was in 1967).

This court ruled in Appeal 886/93 Eli Lilly and Co. vs. TEVA Pharmaceuticals ltd, p.d. 47(2) (1993) “this non-limited Right of Appeal is too wide…it would be appropriate for the legislative to consider if there isn’t room to classify some Commissioner rulings as only appealable at the discretion of the courts.” Subsequently, in the Second amendment of 1995, Section 39 of the law was amended to its current version. The rationale of the amendment was “in order to avoid delays in proceedings before the Commissioner, it is proposed to allow interim decisions to be appealed at the Court’s discretion” See paragraph 32 of the notes to the proposed amendment. In the first ruling of the amendment, the then Minister of Justice David Libai explained the need for the amendment. It transpired that “the patent granting procedure was significantly lengthened to the extent that the value and the enforceability of the patent was in doubt since such a long period had passed from when the invention was made to one of a patent issues”. MK Shaul Yahalom demonstrated the problem of the prior situation: Someone with the resources who opposes a patent can appeal interim rulings and decisions and delay the patent issuing for years (page 774 of the protocol). From the above, it is clear that the purpose of allowing an interim ruling to be appealed is to shorten the proceedings before the Commissioner and to prevent delays caused by multiple appeals to the District Court.

It transpires that the subjective purpose of Section 174 is to shorten the time period that proceedings before the Commissioner can take, by reducing the opportunities for appealing interim rulings as a matter of right. If we see amendment rulings and opposition rulings as independent and appealable by right, the result is an additional appeal on the decision to amend the specification, and a lengthening of the proceedings before the Commissioner. However, an understanding of the Law that sees decisions regarding amendments as interim rulings of the opposition proceedings saves appeals by right and is likely to speed up the overall prosecution process. Thus the underlying rationale supports the understanding proposed by the Attorney General.

The applicant claims that actually their preferred understanding will shorten the discussion. They submit that if one waits for the end of the opposition proceedings to discover that the refusal of the amendment was a wrong call, there will be a need to rehear the Opposition on the amended application. A quicker determination that the specification should be amended will save the necessity for a double hearing. Judge Fogelman does not accept this argument. Firstly, it is likely to be the case in each and every interim ruling in civil disputes, but nevertheless the general rule is that appeals on interim decisions are postponed until the main decision is given (see Cohen, paragraph 8 discussed below). Second, there is a simple answer to the alleged problem which is to request permission to appeal, and where the Court considers that such a solution is preferable than waiting for the end of the entire proceedings, and there is a risk of having to rehear the case, it will grant the request. It should be noted that not every case raises this issue.  In many instances the Commissioner’s ruling will be correct, or at least sufficiently correct that it won’t affect the rest of the proceedings. In other cases the interim ruling will not affect the final result. For example, if the opposition reveals a flaw that is sufficient to prevent the patent from issuing that is wholly independent of the proposed amendments and such a flaw is noted before the request to amend the specification is filed. Consequently, Judge Fogelman does not accept that the assertion that the Court should always acquiesce to requests to correct the specification (and it is better for such requests to be at the discretion of the Court).

Returning to the amendments to Section 174, but this time from a broad perspective: the Patent and Trademark Ordinance 1922 used to regulate the patent law in Israel. The Patent Law regulates patents from 1967 onwards, but the Ordinance regulated earlier patents, and has no relevance to this matter. Section 51(s2) of the Ordinance established the right to appeal some types of decisions, including oppositions to the granting of a patent and orders concerning the correctness of the specification or of the claims (parts d and f respectively).  In the Patent Law, the legislators decided to adopt a different arrangement. Originally he allowed appeal by right of each and every decision and later, whilst the Ordinance was still in force as far as designs were concerned and could be used for comparative purposes, this was amended to only allow appeals of rulings that were considered final decisions of the proceeding. It is clear that the legislators did not choose to allow appeals by category, and this is also sufficient justification to reject the interpretation that decisions regarding amendments can always by appealed by right. Each decision should be considered in terms of its position in the proceedings.

The history of Section 174 shows the subjective purpose of the Section. This supports interpretations that interim rulings regarding amendments are not final decisions that can be appealed by right. We now consider the objective purpose of Section 174 and how it fits into the general patent legislation.

The Objective Purpose of Section 174

The objective purpose of Section 174 can be determined by looking at similar laws relating to Intellectual Property and how they determine appealing Commissioner rulings. Such laws are similar to Section 174. Section 53a of the Trademark Ordinance 1972 states that “A different decision by the Commissioner that is given under this law, may be appealed to the Court if the Court gives permission to do so”. In this regard, “a different decision’ means one that does not close the discussion in the ongoing proceeding”. This Section was added in 2010 (Section 15 of the Law to Correct the Trademark Ordinance 2010). In the two newer sections, there are similar arrangements and accompanying additions. Section 106 of the Design Law 2017 also differentiates between “a decision by the Commissioner that ends a proceeding” which may be appealed by right, and “other decisions of the Commissioner” which are “any decisions that do not conclude the issue before the Commissioner” which may be appealed at the Court’s discretion. The discretionary right is governed by Section 41b of the Law Court Amalgamated Legislation 1984, and the considerations that the Court should base its ruling on are given in Sections 41c and d of that law. Applying the Sections of the Law Court Amalgamated Legislation 1984 is “because other decisions of these kinds may not be separately appealed from the final ruling on the proceeding before the Court” (words of explanation regarding Sections 103 to 106 of the Draft Design Law 2015. Similarly, Section 30 of the Law for Protection of Appellation of Origin and Geographic Locations 1965 conditions the right of appeal of a Commissioner decision on the end of the discussion, and provides a discretionary right under the Law Court Law. This Section was added in 2017 (section 10 of the Law for Protection of Appellation of Origin and Geographic Locations 1965 amendment 6 from 2017). The above legislation shows that the legislators prefer to wait for the end of the proceedings, and prefer to minimize the immediate appeals of various decisions of the various commissioners.

The rationale behind this is similar to the general rationale behind civil law procedure. In recent years, the legislators have limited the right of appeal of interim rulings in civil matters by taking two steps. Firstly, they’ve legislated that interim decisions may be appealed at the discretion of the Court if permission to do so is obtained, rather than at the final verdict, if delaying the appeal will significantly adversely affect the rights of at least one of the parties, will create real damage or result in an unnecessary or flawed proceeding taking place (sections 41b and 52b of the Court Law which were amended in Sections 3 and 4 of the 52nd amendment to the Court Law 2008. Secondly, it defines different types of interim decisions that cannot be appealed, which may only be challenged in an appeal against the final ruling, court orders (decisions that may not be appealed) 2009, and Labour Court Orders 2017. Alternatively, there are some decisions that may be appealed if request to do so is granted. See section 12 of the Municipal Court Law 2000.

Collecting up decisions until the end of the proceeding has several reasons:
There is a significant advantage to a hearing regarding ‘other decisions’ after a ruling issues, and not as the interim rulings occur,  both to prevent delays and because the final ruling may make some or all the interim issues no longer relevant. Furthermore, after the final ruling, all the material is available and it is easier to do a good job where the different issues determined and the operative results of the process are available. See Appeal 2856/12 Cohen vs. M’Atz- the National Road Company. 20 May 2012.

See also Appeal 368/13 Palestinian Authority vs. Litwak Nordick, paragraph 8 from 23 April 2013, and Appeal 6801/15 Bernstein vs. Properties Ch and M.G. ltd, paragraph 123 of Judge Solberg’s ruling 1907, and Guy Shani “Permission to Appeal a Request for Permission to Appeal (Court of Appeal)” Legal Inquiries 30, (2006). These reasons are all similar to that behind Section 174.

The Objective purpose behind Section 174 of the Law is similar to its subjective purpose: to minimize the number of appeals of interim rulings by the Commissioner in order to shorten such proceedings and make them more efficient.

Which decisions are considered as closing the proceeding before the Commissioner?

Section 174 of the Law differentiates between different interim rulings by the Commissioner, depending on how they affect the main proceeding – if it concludes it or not. This difference is very similar to the general civil law differentiation between a ‘court ruling’ and ‘another decision’. The purpose of Section 174 accords with the general trend in civil law governing interim rulings. New IP laws explicitly reference the section of the General Court Law that makes this distinction. For reasons of legislative harmony, the general civil law standard should be adopted here.

Civil Law differentiates between ‘rulings’ which can be appealed by right, and other ‘decisions’ which, if given, can only be appealed at the Court’s discretion. To make the distinction one considers if the Court has finished considering the allegations made in the Statement of Case and has finished its work. (Appeal 39/60 Avshalom vs the Pension Fund of Israeli Teachers Working for the Education Ministry (disbanding out of choice) p.d. 14 (1960). To classify rulings given before the end of the consideration of the case, the help test is applied. Under the help test, a “decision” (or “partial decision”) is a ruling in which the plaintiff is awarded the requested sanction, or it is partially awarded or refused. (Appeal 6058/93 Mandelblit vs. Mandelblit, p.d. 51(4) 1997. A decision that does not address the final sanction is ‘another decision’. Applying the sanction is significant: there is no importance given to the name or the description given to the sanction by the Court that issues it. The name is not decisive, but the type of ruling is, in that if by issuing it the Judge has finished his work in ruling on the case it is to be considered final (See Appeal 1096/83 Gamzu vs. Golomb, p.d. 38(1) (1984) the decision should be considered in respect to the case in question and the sanction requested.

When substantively considering the proceedings for which the Appeal was requested, we note that the applicant requested a patent, and the respondent initiated an opposition proceeding. During the opposition proceeding and as a direct result of it being initiated, the applicant requested to amend the specification. The applicant justified the request by stating that whilst reviewing the Opposition they became aware of the need to correct various things in the patent application. There is thus a clear direct link between the request to amend the application, and the Opposition having been filed. The amendment was not something independent of the Opposition in a separate proceeding, but was requested to help the applicant overcome the Opposition. Thus we have before the Court, a primary proceeding (the opposition), and an interim proceeding (the request to amend the specification). To consider whether an early appeal on the interim ruling is appropriate, one should consider the action requested in the main case. The decision on whether or not to allow the amendment does not result in the patent being granted or refused. It can still be granted in its entirety, refused, or partially granted, and the discussion regarding the opposition continues. Thus the decision not to allow the amendments is to be regarded as ‘another decision’, and is neither a ruling nor a partial ruling, so requires the Court’s consent to be appealed.

The substantive analysis is always appropriate when a request to amend the application comes in response to an Opposition against that application being granted. Substantively classifying the proceeding leads to the conclusion that the amendment request is not independent and is not a proceeding in the sense of Section 174 of the Law. As written above, the Application and the Opposition may in some cases be different and it is possible that a request to amend the specification could close discussion and so an appeal is in order. There is no reason to nail down when a request to amend the application is a result of an opposition being filed. This is often a factual matter, and should be considered on a case specific basis.

From the above it transpires that the decision of the Deputy Commissioner regarding the amendment request does not terminate the proceeding before her. One has to obtain permission to appeal this decision when it was given. The applicant will, however, be able to appeal this decision as of right, at the end of the proceeding.

Other Issues –  Responses to Counter Claims

The applicant claims that in this matter, one should take the right of appeal into consideration. It is noted, that even if one consider the right of Appeal a constitutional right, like all other rights, it is not absolute. It is balanced by the needs for the system to be function and that decisions may become final to bring discussion to an end (See Bagatz 2442/11 Shtangar vs. Head of Knesset, p.d. 66(2) 2013. Anyway, the classification of the decision as ‘another decision’ does not take away the right of appeal against it. It merely delays this right until the end of the proceeding, and still leaves open the option to obtain permission to appeal the interim ruling.

The other arguments of the Opposer are intended to find some exceptional reason in the request to amend the specification that justifies such requests being granted automatically, regardless of them being dependent or not on the main proceeding. One such argument is that since the refusal of an independent request to amend the application can be immediately appealed, this should be the law for requests to amend the application that result from oppositions. This argument should be rejected. In the requested sanction test, the case and the sanction are considered, and it is conceivable that the same type of amendment could be considered a ‘final ruling’ in some instances but ‘another decision’ in other cases. Similarly, the fact that the two types of amendments are in different chapters of the patent law is not significant. Section 174 is not restricted to proceedings under specific sections or chapters of the Law. One should consider the essence of the proceeding and not the title or source.

The applicant alleges that the decision not to allow the amendment affects the entire opposition proceeding, and so permission to appeal it should have been given. The applicant continues that should the Deputy Commissioner refuse the amendment, the applicant could get a patent that they are not interested in, or one with a flaw, and would not be able to appeal this eventuality since they would apparently have been issued the patent they applied for. Judge Fogelman was not impressed with this argument. Firstly, the test of the requested action, even ‘an important decision that affects the fate of the case’ may be considered an interim decision that can only be appealed if permission to do so is given. So for example, if a complaint is filed in an accelerated prosecution proceeding and the defendant requested the right to defend himself and this was not given. In practice, the substantive discussion is truncated with the submission of the complaint, since the next step is a ruling to accept the complaint. Nevertheless, such a ruling is classified as ‘another decision’ – see Appeal 26/88 Shamai vs Tefachot Mortgage Bank of Israel ltd p.d. 42(2) (1988), 9392/10 Bank Discount of Israel ltd vs. Rasuli, 2013, and Section 9(1) of the court ruling. Only on issuance of a decision with an action awarded to the plaintiff can one appeal against the entire ruling, or against any interim ruling that one had not been given a discretionary right to appeal at the time. (see Chani Ben-Nun and Tal Chenkin – Civil Appeals Vol 3, 2012). Secondly, even were the Deputy Commissioner to reject the Opposition, the applicant would still have the right to appeal the final verdict and all interim decisions. When appealing a verdict by right, one can challenge intermediate rulings (Regulation 411 of the Civil Regulations 1984 and 8629/08 Atar vs. Eshel p.d. 65(1) 2011. A party that is harmed by another decision is then able to appeal it by right. For example, during a civil proceeding, the court fined the plaintiff for interim rulings (Appeal 519/08 Chori vs. Exad, p.d. 64(1) 2010. This is an interim ruling (5526/18 Yafa vs Diamant). At the end of the proceeding, the Court accepted the complaint and ruled all the requested actions. The plaintiff is nevertheless entitled to appeal costs ruled against him. Similarly, if the Deputy Commissioner rejects the Opposition, the Application can still appeal the refusal to allow the amendment.

Other Questions that the Applicant Requested Permission to Appeal

Judge Folgelman did not see fit to allow the other issues raised to be appealed either. These included permission to appeal to the District Court, the ruling regarding the amendment, and the ruling regarding the deletion. The claims of the applicant were considered by the standards set out in the Haifa Parking Lot ruling. Noting that the applicant could appeal the amendment decision at the end of the proceedings so the issue is not irreversible, he did not find that there was any significant legal issue that warranted granting permission to appeal. Furthermore he did not find that the conciseness of the decision by the District Court refusing the request to Appeal was itself a cause for appealing (See Appeal 290/15 Brand 4U ltd vs. Rami Levy ltd, paragraph 11 and Appeal 668/89 Peer vs. Bet Frishman 38 ltd (being disbanded) p.d. 44(4) 693, (1990).

CONCLUSION

If following the Opposition, the applicant requests to amend the Application, the Commissioner will consider this request first. This is ‘another decision’ that does not terminate the proceeding before the Commissioner. Such a decision may be appealed immediately if permission is given to do so, and may be appealed as of right at the end of the Opposition proceeding. The Appeal is rejected and the Applicant is ordered to pay 20,000 Shekels to the Opposer.

Appeal 1092/18 Tnuva vs. Strauss regarding the patent for YoYo Chocolate Pudding, Ruling of 25 December 2018 by Judge Fogelman, with Judges Amit and Mintz concurring.   



Categories: appeal, Intellectual Property, interim decision, Israel IP, Israel Patent, Israel Patent Agency, Israel Patent Office, Israel Patent Office Rulings, opposition, oppostion, Uncategorized

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