Black Diamond Word Mark Successfully Opposed

January 11, 2017

black-starYunusov Timur Ildarovich, a citizen of the Russian Federation, requested Israel Trademark Number IL 273221 for BLACK STAR in classes 13 and 14 covering agates; diamonds; amulets [jewellery, jewelry (Am.)]; bracelets [jewellery, jewelry (Am.)]; charms [jewellery, jewelry (Am.)]; key rings [trinkets or fobs]; brooches [jewellery, jewelry (Am.)]; alarm clocks; pins [jewellery, jewelry (Am.)]; tie pins; pearls made of ambroid [pressed amber]; pearls [jewellery, jewelry (Am.)]; tie clips; cuff links; gold, unwrought or beaten; cloisonné jewellery [jewelry (Am.)]; works of art of precious metal; jewellery of yellow amber; semiprecious stones; spun silver [silver wire]; necklaces [jewellery, jewelry (Am.)]; rings [jewellery, jewelry (Am.)]; boxes of precious metal; medallions [jewellery, jewelry (Am.)]; precious metals, unwrought or semi-wrought; coins; gold thread [jewellery, jewelry (Am.)]; silver thread [jewellery]; olivine [gems]; osmium; palladium; platinum [metal]; silver, unwrought or beaten; earrings; ingots of precious metals; alloys of precious metal; statues of precious metal; figurines [statuettes] of precious metal; paste jewellery; ornaments [jewellery, jewelry (Am.)]; shoe ornaments of precious metal; hat ornaments of precious metal; ornaments of jet; chronometers; watches; wristwatches; spinel [precious stones].

The Application was the an Israel National entry of International Trademark Number 1239831.

On allowance, the allowance was reported to the International Office of WIPO as per Section 56vi of the Trademark Ordinance, providing detials of the Opposition period.

On 27 September 2016, an opposition in Class 3 was filed on behalf of Sea of Spa Laboratories Ltd under Section 24 of the Trademark Ordinance 1972 and regulations 35-46 of the 1940 Trademark Regulations. The Opposition was reported to WIPO, and the various deadlines passed without Ildarovich responding to the Opposition, so he is considered as having abandoned the application.

The mark is closed and no costs are awarded.

 


Novartis Patent Application Struck Down In Israel Opposition

January 11, 2017

glivec

Israel Patent Application No. 174082 to Novartis is titled “METHANESULFONATE SALT OF N – PHENYL – 2 – PYRIMIDINEAMINE DERIVATIVE, PROCESS FOR ITS PREPARATION AND USE THEREOF FOR THE PREPARATION OF A TABLET CONTAINING THE SAME”.

On allowance, Teva Opposed the patent. This decision relates to the utility requirements and to double patenting.

Background

The Israel Application is a divisional application of IL 133906 which is a national phase entry of PCT/EP1998/004427, claims priority from a Swiss application filed back in 2007. The case published as allowed at the end of May 2010, and an Opposition was filed by Teva on 28 August 2010.

Following Statements of Case from the parties, Novartis submitted a request to correct the claims, and narrowed the scope of claim 1, adding a dependent claim 2. This somewhat delayed the proceedings. In May 2012, the Applicant requested a further amendment to narrow the scope of claim 1. (During Opposition, and indeed after grant, claims may be narrowed, so long as doing so is clearly a narrowing in all cases).

Teva did not object to either amendments and submitted an amended statement of case in June 2013. Novartis responded in September 2013 and by November 2014 both sides had submitted their evidence.

Teva submitted an expert opinion by Dr. Mark Zakrzewski and Novartis filed expert opinions from Dr. Simon Bates and from Patent Attorney Dr. Gail Volman. However, in lieu of a hearing, the parties agreed that the Commissioner would rule on the case based on the submissions, and, following his agreement to so doing, the parties filed their summary statements and counter statements.

The subject matter of the patent is Imatinib (N-phenyl-2- pyrimidine-amine) which was developed in Ciba Geigy, later Novartis, and is marketed as Gleevec® in the U.S. or Glivec® in some other countries. It is a competitive tyrosine-kinase inhibitor used in the treatment of some types of cancers, most notably Philadelphia chromosome-positive (Ph+) chronic myelogenous leukemia (CML).

(An opposition was lodged against the application in India by several Indian generic drug manufacturers including NATCO Pharma Ltd., CIPLA Ltd. Ranbaxy Laboratories Ltd., Hetro Drugs Ltd. and also by the Cancer Patients Aid Association. On April 1st, 2013 the Supreme Court of India dismissed Novartis’ patent application, so there are generic versions of the drug on the market. in India and the majority of the patients – 300,000 patients – are treated by the generic versions).

In Glivec, the Imatinib Methanesulfonate is found in the Beta polymorph which differs from the needle-like alpha polymorph and this affects various physical properties.

After the amendments described above, the claim set consisted of five claims, the first being independent.  The main claim is directed to non-needle-shaped crystals having certain diffraction peaks as follows:

174082-claimClaim 2 adds additional characteristic XRay diffraction peaks. Claims 3 and 4 respectively relate to capsules and tablets comprising the beta polymorph and claim 5 relates to a method of fabricating the tables of claim 4.

The Opposer’s Statement of Case

90The Opposer notes that the specification provides support for a material comprising at least 90% of a specific (beta) salt defined by a spectrum of peaks. The main claim, by merely specifying two characterising peaks, effectively claims other polymorphs not necessarily yet discovered and so the claims ‘greedily’ encompass more than the specification teaches.

beta.jpgThe justification for the patent is related to enhanced flow properties of the polymorph. However since the claims cover traces of the polymorph, the claimed material as a whole does not show enhanced flow properties.

Based on the introduction to the specification, the Opposer believes that the scope of the patent should be limited to at least 90% of the specific polymorph as characterized by all its peaks. In response to the Applicants claim that the introductory paragraph was included by mistake, the Opposer notes that such a ‘mistake’ is a factual error and to substantiate that it occurred requires factual support, not expert opinion, and so this claim of mistaken inclusion should be struck from the record or given negligible evidentiary weight. To support this argument, Teva notes that Dr Voleman was not the representative of Novartis during the patent prosecution when the paragraph was allegedly mistakenly included.

Furthermore, Teva posits that the average person of the art reading the application would conclude that the invention is for formulations including  at least 90% by weight of the (beta) salt of Imatinib Methanesulfonate rendering Dr Voleman’s opinion irrelevant.

Double-dip.gifFinally, the Opposer claims that there is overlap between the claims of this divisional and of the parent application, and thus the Applicant is trying to obtain two patents for the same invention. However, this line of reasoning was not related to in the summary and seems to have been abandoned.

The Applicant’s Position

just-another-exampleThe Applicant considers that the specific Example of 90% beta polymorph given in the specification is simply that. It is a non-limiting specific formulation that is provided by way of example.

The Applicant accuses the Opposer of cherry-picking statements from the specification to provide interpretation to the claims, rather than to interpret the claims in light of the specification taken as a complete document. The introductory paragraph was provided for administrative purposes and is not to be used to interpret the patent. Indeed, this paragraph was never intended to be part of the disclosure and was included in the specification by mistake. The parent application cherry-pickingclaimed the beta polymorph in concentrations exceeding 90% and at the time of filing, the Applicant considered that the practice was to conform the background to the claims, and then to file a divisional with the same specification as the parent, but with different claims. Consequently, the limitations of the introductory paragraph referred to the parent and not the divisional, were inherited from the parent, and are not to be considered as limiting the scope of the claims. Thus according to the Applicant, persons of the art would appreciate that the application in question is a divisional application and the paragraph in question related to the parent patent.

morphThe Applicant claims that the present application claims a new polymorph and is a product claim that is per se patentable. To argue the point they referred to TEVA applications for polymorphs that claim the desired properties of the polymorph, such as flow properties, compaction properties, and the like. These are characteristic of the polymorph but it is the polymorphs itself that is being protected as a new composition of matter.

The properties of the beta polymorph are inherent to the crystalline structure and not to the concentration of the polymorph in the formulation. Since the beta polymorph has inherent advantages, its discovery and manufacture has utility and is thus a patentable invention.

Discussion

The guidelines for patentable subject matter are given in the Supreme Court rule 345/87 Hughes Aircraft vs. State of Israel p.d. 44(4) 45, 65:

“true the interpretation of patents is not substantially different from the interpretation of any other document, and the standard laws of interpreting papers apply to it. However, due to the special nature and power of patents, additional care must be taken in interpreting since they effectively provide a monopoly in the marketplace. The basic principle is that the patent should be read as a document in its entirety to understand the inventor’s intention as it is expressed in the document…since the patent is primarily directed to professionals in the technological field that the patent considers to be the field of relevance, it should be interpreted using professional knowledge (state of the art) at the time of filing. However, since the patent is supposed to indicate the inventor’s intention, there is some flexibility in giving interpretation to phrases and terms that appear in the claims and the rest of the specification, such as the description, may be used as a dictionary for these phrases and terms. In other words, as a lexicography of the invention.”

Section 13a of the Law states that:

The specification will conclude with one or more claims that define the invention, however these claims must be fairly based on the specification.

Regulation (20)a(3) of the patent regulations 1968 expounds section 13 and requires that the claims are ‘succinct and clear’.

It will be appreciated that the claims define the scope of protection claimed. The claim interpretation should be based on the specification in its entirety – including the description and the figures (Hughes, page 65). However, one cannot import limitations from the specification into the claims:

“The starting point for the appropriate approach is that patent documentation is a one-sided document that the inventor himself writes and he has freedom to write it as he likes. (Catnic Components Ltd. [22] at 242).  A lack of clarity regarding the explanation of a phrase or term in the claims can be made by reference to the specification so long as this is done with reference to the specification as a whole and not selectively in a way to favour the applicant whilst disregarding other phrases in the specification that lead to a different interpretation (Electric & Musical Industries Ld. And Boonton Research Co. Ld. [21], at 41).”

Section 13(a) deals with the question of whether the claims of the application are fairly based on the specification and whether or not they are sufficiently enabled for persons of the art to practice. The Court of Appeals of the EPO has nicely summed this up as follows:

“Undue breadth is not a reason for refusing a claim under the EPC as long as its subject-matter is novel and inventive, and sufficiently disclosed in and supported by the description.” T 0593/96 INDIGO N.V. (18.11.1996). 

See also  T 0456/91 Syntex (USA) Inc. v. Debiopharm S.A., (3.11.1993).

In this instance, the Opposer alleges that the claims are not supported by the specification to the extent required by Section 13(a) of the Law since the claims are wider than that supported. The Opposer calls the claims ‘Greedy’. The extent that this term can be used with reference to the requirements of Section 13(a) is given in Appeal 1008/58 Alerican Cyanamid vs. Lepitit et al. page 261 from 4 April 1960. See also Opposition by Teva to IL 142809 to Pharmacia AB from 26 February 2015.

In his Opinion from 1 December 2013, Dr. Mark Zakrzewski (Teva’s expert witness) notes that the invention clearly specifies a 90% concentration of the beta phase.

“34. The alleged invention is explicitly described in the Patent Application as a methansulfonate salt of Imatinib Mesylate comprising “at least 90% by weight of crystals of the β-modification…” or “in essentially pure form”.

Based on this, the Opposer considers that claim 1 which lacks this limitation is wider than that supportable under Section 13(a).

Consideration of the Application itself shows that there is no certain preference to limit the concentration of the beta phase. For example, page 3 states:

“The invention relates to an acid addition salt of a compound of formula I comprising non-needle-shaped crystals, especially the β-crystal form of the methanesulfonic acid addition salt of the compound of formula I.

The invention relates especially to a particular, form of the monomethanesulfonic acid addition salt of a compound of formula I,

formula

comprising at least 90% by weight of crystals of the β-modification, said crystals of the β-modification showing on X-ray diffraction a peak at an angle of refraction 2theta of 20°, said peak having a relative line intensity of 65 as compared to the most intense line in the diagram”.

Further on, on page 4 of the specification, the following is stated:

“The term “essentially pure” is understood in the context of the present invention to mean especially that at least 90, preferably at least 95, and most preferably at least 99 per cent by weight of the crystals of an acid addition salt of formula I are present in the crystal form according to the invention, especially the β-crystal form.

…                                                  

The invention expressly relates also to those forms of the methanesulfonic acid addition salt of a compound of formula I in which crystals of the crystal form according to the invention, especially the β-crystal form, are present in essentially pure form…”.

From the above it is clear that the specification does relate to the beta phase in a manner that does not necessitate limiting it to a preferred concentration. Apart from the opening paragraph which will be discussed separately, the specification uses terms such as ‘particularly’ and ‘especially’ with regards to concentrations and does not limit to these desirada.

The reader will appreciate that the patent relates to the non-needle-like beta phase but not to specific concentration ranges. See Section 22 of Dr Bates’ opinion on behalf of the Applicant:

“22. Contrary to Dr. Zakrzewski’s assertions, the specification teaches and enables form β per se, without any purity limitations. An “essentially pure” form β is one of the preferred embodiments of the invention, but by no means reflects the entire scope of the invention. Dr. Zakrzewski apparently selects a couple of paragraphs which highlight a preferred embodiment, disregards the teaching of the specification as a whole will readily understand that the invention is the discovery and development of the novel form β and that the invention is not limited to form β only when it is “essentially pure”.”

As to the practice of claiming new polymorphs, Dr Bates opines:

“Indeed, just like new chemical entities, novel polymorphs are claimed per se without quantitative purity limitations. At the most, quantitative limitations are a preferred embodiment, as in the instant case. For the sake of demonstration, I instructed applicant’s counsel to search polymorph patents issued to Teva by the USPTO. Overall, 78 patents claiming polymorph forms were found. 77 patents out of 78 patents claim the polymorph forms per se, without “quantitative” or “purity” limitations…”

The Applicant explained that the introductory paragraph was the result of the Examiner requiring the specification of the parent to be conformed to the claimed invention, and then was inherited in the divisional application. This claim, related to in Dr Voleman’s opinion, relates to factual matters. Commissioner Kling concurs with the Opposer that Dr Voleman is not the ‘correct’ witness to testify that this was a mistake and does not have first-hand knowledge regarding that which she is about. Such a claim requires support by an affidavit and is a matter for first-hand testimony and not for an expert witness to hypothesize about.

That said, the state of affairs is not sufficient to warrant deviating from the general principle stated in the Hughes Aircraft Decision, that the specification should be considered ain its entirety. From this perspective, the Commissioner is willing to accept the Applicant’s claim that the introduction is not indicative of the scope of the invention and cannot be relied upon to the exclusion of the rest of the specification to explain that scope of the application. A person of the art who reads the document as a whole would not rely on the introductory paragraph alone, but would read the patent application in its entirety.

Utility

The Opposer alleges that the claimed invention does not have utility since it does not demonstrate the advantages of the beta polymorph when present in minor proportions.

It is true that amongst other requirements, in accordance with Section 3 of the Law, a patentable invention has to have utility. The utility is a requirement that the patent application as a whole must satisfy as stated by Judge Hendel in Appeal 5041/13 Anat Gabai et al vs. Aminach Mattresses, 21 January 2014:

Reading the main paragraph that gives the requirements for patentability teaches that “utility” is the second criterion of the four criteria for patentability. This is not by chance. All patent applications are expected to have utility.

The nature of the utility requirement is discussed by Judge Netanyahu in Appeal 665/84 Sanofi vs. Unipharm p.d. 41(4) 729:

At the time of filing the Application, it has to include a promise of utility. If this is the case, generally the requirements of Section 3 are met. Proof of this promise will be required at the Opposition stage, if this is submitted as grounds for Opposition, or in a cancellation proceedings or infringement action. In Oppositions, the burden of proof is on the Applicant since the patent has not yet issued; in cancellation or infringement proceedings the burden is on the challenger / infringer.

See also the Opposition to 179840 Aminach Furniture Industries Ltd vs. Anat and Moshe Gabai, 20 November 2012.

In this instance, it appears that the promise that is the basis of the Application is the advantage of the Beta phase regardless of concentration. (There is no dispute that the beta phase is novel and inventive). The advantages that Novartis’ witness Dr Bates has alleged are the improved flowability and compactability of the beta phase when compared with the alpha phase, and the parties concur that these properties are desirable in pharmaceutical formulations.

To the extent that the claimed properties are substantiated, they are substantiated for formulations with a greater than 90% concentration of the beta phase. The Applicant did not demonstrate or provide evidence of these properties in lower concentrations.

As stressed above, in the Sanofi ruling, the court emphasized that the claimed advantages have to be proven at the opposition stage if the utility is challenged. Some evidence is required to show that the promise is attained, although not necessarily the quantity of experimental evidence that would be required were the opposers to actively provide counter-evidence.

In this instance, the Applicant continues to allege that they deserve a patent for formulations with even minimal beta content. The Opposers have noted that there is no evidence that such low concentration formulations have advantages over the alpha phase and the Applicant has not provided evidence to support their claims or a reasonably convincing counter-argument in response to the Opposer’s reasoning. This is not to say that had the Applicant’s expert witness related to this, his arguments would have been found convincing – See Opposition ruling concerning IL 143977 Unipharm vs. AstraZenica AB paragraph 44.

In this instance, at the joint request of the parties, no witness is being cross-examined. From this it is clear that the Applicant has not substantiated their claim that formulations with low concentrations of the beta phase have sufficient utility  to be patentable.

The overlap between the claims of the Divisional Application and those of the Parent

In addition to the above, the present application is not patentable due to the significant overlap between the claims and those of the parent patent.

Whilst it is true that in their summation, the Opposer abandoned this line of reasoning, the Commissioner does not consider that this fact alone is sufficient for the matter to be dropped since oppositions are a continuation of the examination process and the patentability question is once again opened. The purpose of oppositions is to ensure the purity of the register and is a continuation of the administrative process (See Opposition to 136482 Bromium Compositions vs. Albermarle Corporation USA, 7 November 2010.

Section 2 prohibits granting a patent for an already patented invention. See also the IL 203972 Novartis decision. To address the issue of double patenting it is necessary to consider the scope of the invention. The scope of the invention may be learned from the total breadth of protection that the patentee receives (see 2626/11 Hassin Fire Industries vs. Koniel Antonio (Israel) Ltd. 14 November 2013 paragraphs 35-38.)

Independent Claim 1 of the parent application claims the beta phase of the Imatinib Methanesulfonate salt at concentrations of at least 90% with a strong 2theta XRay defraction peak at 20° as follows:

formula-parent

Thus the parent claims the same beta Imatinib Methanesulfonate salt concentrations of at least 90% whereas claim 1 of child patent does not include a minimum concentration. The specifications are the same apart from minor differences that are insignificant, and so the claim construction considerations used to define the terms are the same in both the parent patent and in the divisional application. Despite different phraseology the scope of the claims overlap.

The differences are in the non-needle like form of the crystal, the characteristic XRay diffraction peaks and the concentration limitation of the parent.  Careful examination indicates that the same polymorph is covered by both cases, although defined differently, with the sole difference being the concentration limitation in the parent is not in the divisional application and this removal of the concentration limitation is the feature that the Applicant points to as being the patentable feature. However no advantage is given for the low concentrations covered by the divisional application. The Applicant claims that the parent patent and divisional application cover different aspects of the invention. However, the concentration is not an aspect warranting separate registration.

The IL 174082 Application is refused. Costs are applicable as per Commissioner Circular M.N. 80.

Comments

It seems to me that the person of the art considering a patent publication to understand the scope of the claims is a patent attorney with pharmacological background, or a team including technical people and patent counsel. I don’t believe that any industrialist (except possibly Dr Zebulun Tomer of Unipharm who has been challenging blockbuster patents for years and has been known to file oppositions by himself) would construe the claims of a pharmaceutical patent without seeking legal advice so Dr Volman can be considered as an expert.

The Commissioner is correct that there is no obvious or demonstrated utility for the lower concentrations.


Israel Trademark No. 268867 to M Yildiz Saadettin Cancelled Following Challenge by the Polo/Lauren Company

January 8, 2017

The Polo/Lauren Company filed a request for an opposition ruling against Israel Trademark No. 268867 in classes 14, 18 and 25. The mark was filed by M Yildiz Saadettin as part of international application number 11451800 which listed Israel as one of the countries covered.

In accordance with Rule 56vi, on 7 July 2016 the Israel Patent Office wrote to the International Office of WIPO to the effect that the mark was accepted, and indicated that there was a three month period for opposition. A similar letter was sent to the Applicant’s representative.

On 5 October 2016 the Polo/Lauren Company submitted  a detailed opposition to the registration in all three classes, under Section 24 of the Trademark Ordinance and Regulations 35 to 466 of the 1940 regulations. Following this, the Israel Patent and Trademark Office informed the applicant that such a proceedings had been initiated, giving them the deadline for responding.   by filing a counter-statement of case. The Applicant had two months, until 4 December 2016 to respond.

Until the time of writing this decision on 25 December 2016, no response was received.


Requesting a patent allowance to be cancelled

January 8, 2017

reconsideration

Israel Patent Number 219586 to Fritz Collischan & Co. KG was allowed. The patent is titled “DEVICE FOR COUNTING OBJECTS FED AS BULK MATERIAL”and is the national phase entry into Israel of PCT/EP2010/067146 which published as WO2011/054974.

In a rather surprising move, Data Detection Technologies Inc, represented by Pearl Cohen Tzedek Latzer Brats requested that the allowance of the patent be cancelled. Actually this is not the first request of this type, for the present patent.  Back on 9 March 2015, following a request to have the allowance withdrawn on grounds that the applicant did not provide a list of prior art as required to under Section 18 of the Law, the same third party requested that the patent be disallowed, and on that occasion, the Applicant agreed for it to be returned to a state of pending allowance. Following that episode, the now pending patent application was returned to the Examiner and eventually was allowed on 29 September 2016 and published for Opposition purposes under Section 26 of the Law. Data Detection Technologies Inc have again requested that the case be returned to the Examiner as they have found additional citations and video clips that they claim reveal the invention and which were sent by themselves to the Applicant some month before allowance.

Despite bringing the additional material to the Applicant’s attention, the Applicants did not make this art of record and the patent was eventually allowed under Section 17c, on the basis of a corresponding issued patent (which presumably itself issued without the Examiner thereof considering the video clips and publications submitted by Data Detection Technologies Inc. Data Detection Technologies Inc argued that this failure is sufficient to prevent the patent issuing under Section 18c of the Law. Alternatively, since the citations are central to the patentability of the invention, Data Detection Technologies Inc considers that minimally the patent be returned to the Examiner for further Examination.

Data Detection Technologies Inc considers it inappropriate for them to have to fight an expensive opposition proceedings which was caused by the applicant failing in their duty of disclosure.

The Applicant claims that the appropriate way to raise issues relating to the duty of disclosure is via an opposition proceedings, and the arguments submitted by Data Detection Technologies relate to grounds for Opposition under Section 31 of the Law. The Applicant posits that withdrawal of allowance is an appropriate measure only in those rare cases where the decision to allow was flawed, or where a letter of allowance was issued by mistake. The Applicant does not consider this to be such a case.

The Applicant notes that the additional material was collected in an opposition proceeding that Fritz Collischan is fighting against an allowed patent of Data Detection Technologies. In that proceeding, Data Detection Technologies Inc requested an extension to respond to the Opposition and to amend the specification. The Applicant submits that the extension was applied for in bad faith and with factual inaccuracies in the justifications given. The Applicant further submits that the  Affidavit includes hearsay that is not acceptable as evidence.

Ruling

The parties concur that the Commissioner may cancel a notice of allowance and return an application to the Examiner if there is a major flaw in the decision to allow the patent. This authority is derived from Section 15 of the Law of Interpretation 1981 and was adopted by the patent office in the previous ruling concerning Data Detection vs. Collischan from 9 March 2015 and also in the Cellular Dynamics vs. Christopher Reed ruling from 29 April 2014.

The argument is whether the current situation is one where it is appropriate for the Commissioner to exercise their authority and to withdraw the notice of allowance, or whether the appropriate action is for Data Detection Technologies Inc to file an Opposition under Section 31 of the Patent Law 1967?

The Deputy Commissioner, Ms Jacqueline Bracha considers that the choice of appropriate course of action is to be found in the purposes of the two courses, which are also derived from their different ways of being initiated. The authority under Section 15 of the Law of Interpretation is something initiated by the administrative body to correct a mistake that they made in an earlier decision or t as a result of a change of circumstances, as an exceptional course of action where there is no other appropriate recourse authorized by the law (See Y. Zamir, Government Authority (1996) pages 1003-1006. In contradistinction, the purpose of the Opposition proceeding is to critique the Examination and to continue the Examination of a patent application in an inter-partes procedure initiated by the third party (see the Israel Patent Office Ruling re IL 136482 Bromium Compounds Ltd vs Albermarle Corporation of 7 November 2010.

 With all due respect, I consider that the courts approach has changed since then, and nowadays the Supreme Court considers the Opposition procedure as being complimentary to and a completion of the Examination since it is intended to serve the public interest and the accuracy of the register.

In the framework of cancellation of an allowance the amount that the public would have relied on the notice of allowance and the type of mistake that resulted in the allowance are to be considered. However, it should be appreciated that not ALL mistakes justify the cancellation of an administrative decision. A mistaken decision based on consideration of the facts and simply reaching the wrong conclusion, will not, in general, justify changing an administrative decision (see Zamir on page 1006). The Authority will generally reach this result in cases where there is a suspicion that someone has been awarded more than he deserves. Such a suspicion is not sufficient to justify cancelling the benefit by the  government body (see Zamir on Page 1007).

In contradistinction to the civil proceeding to cancel an administrative  decision, the Opposition is an adversarial judicial proceeding or sub-judicial proceeding that allows the parties to bring evidence in accordance with the law of evidence, allows opposing counsel to cross-examine witnesses and enables the patent office to come to a reasoned decision. In such a proceeding, the Patent Authority is not limited by the administrative decision and he can reexamine the patentability of the invention in light of the evidence and claims before it, even apart from the considerations that the Examiner used in reaching the decision of allowance.

From the above it is clear that where a mistake in a decision is not self-evident and requires substantive clarification, the administrative decision to cancel the allowance is inappropriate.

In this instance, to determine whether the applicant is required to alert the Examiner about the publications that Data Detection mention, one has to see whether the publications “relate directly to the invention” as required by Section 19(a)2 of the Patent Law. To do this, it is necessary to listen to the claims and evidence of the parties regarding the nature of the invention.

Even if a decision is reached that the Applicant should indeed have made these publications of record under the duty of disclosure, it is necessary to consider if a failure to have done so can be dealt with by the alternatives in Section 18 or if the decision to allow the patent [to proceed for opposition purposes] should be cancelled. In this regard, to the extent that a publication allegedly shows the patent being demonstrated or implemented, the Examiner is not duty bound to consider it.  Section 17b of the Law states that:

(a) an Examiner will consider if the Examination answers all the following:
(1) is for an invention considered patentable under Chapter 2;
….
(b) despite section (a)(1), there is no obligation to examine patentability in accordance with Section 4(2). 

In summary, the Deputy Commissioner Ms Bracha does not consider that the present case is a mistake that warrants cancellation of the Notice of Allowance and does not see how the legal and factual issues can be considered in a decision to cancel the allowance and how this advances the case to a final decision on patentability.

The final claim of Data Detection Technologies Inc, that Applicant’s failure to make art of record should not oblige them to enter a lengthy and costly opposition proceeding. It is true that oppositions are lengthy and the regulations provide at least 16 months from initiation of an opposition until a hearing is scheduled. The parties may request extensions and interim decisions, to correct the specification and more. Nevertheless, the Opposer can submit their evidence on filing their statement of case, thereby significantly shortening the procedure. Furthermore, on conclusion of the opposition, the prevailing party is awarded actual costs, if they are essential, reasonable and proportional See Bagatz 891/05 Tnuva Agricultural Cooperative vs. the Authority for Granting Import licenses, p/d/ 60(a) 600. From here it is clear that if Data Detection Technologies Inc are right, they can expense appropriate compensation.

Therefore it is not considered that the decision to allow the patent was clearly erroneous, justifying its cancellation without a factual inquiry, and it is precisely the anticipated costs that are incurred by an opposer for conducting an opposition that tilts the balance towards holding an opposition proceeding.

As an afterword, it is noted that this is not the place to consider the behavior of Data Detection Technologies in a separate opposition before the Patent Office.

Data Detection Technologies are ordered to pay 4000 Shekels + VAT in legal fees to Fritz Collischan.

Comment

This decision is a correct one. Since, nowadays pending applications publish 18 months from priority and the whole file wrapper is available for examination prior to allowance, maybe Israel should formally allow third party prior art submissions.

It seems that Data Detection Technologies Inc is trying to delay issuance without formally filing an opposition. I think that this decision, not allowing this is correct.

Previous opposition rulings that relate to failure to submit art generally did not invalidate the patent on this ground alone, but it is within the authority of the patent office to do so.


Halibo

December 25, 2016

Israel Trademark Application Nos. 262467 and 262468 are stylized marks in English and Arabic respectively, for Halibo, covering Milk and milk products; powdered milk; milk substitutes; all included in class 29. The applications were submitted by Sons of George Shukha Food Import and Marketing Ltd on 30 January 2014.

Israel Trademark Application No. 268703 is for the word mark in English (Halibo) and Arabic (حليبو). The application covers dairy and milk products, and was filed by Fareed Khalaf Sons Company, a Jordanian company, on 29 September 2014.

As the Sons of Shukha’s applications were still pending, a competing marks procedure ensued.

On 2 August 2016, the Sons of Fareed Khalaf successfully requested to stay responding to a final office action alleging that their mark was inherently non-distinctive and therefore contrary to Section 8a of the Trademark Ordinance due to the competing marks proceeding. On the same day, the two applicants filed a joint request for an extension to file their evidence in the competing marks proceeding which was approved, giving them until 17 November 2016. This was extended again until 24 November 2016. Read the rest of this entry »


Exforge Patent Successfully Opposed in Israel, despite surviving an Opposition based on similar citations in Europe

November 7, 2016

Exforge is a blockbuster drug sold by Novartis for lowering blood pressure that combiexforgenes two medications in a film-coated tablet It contains amlodipine, a dihydropyridine-type calcium channel blocker, and valsartan, an angiotensin II receptor antagonist (ARB or A2RA); typically formulated as the benzenesulfonate salt.

Israel Patent Application No. IL 140665 titled “USE OF COMBINATION COMPOSITIONS COMPRISING VALSARTAN AND AMLODIPINE IN THE PREPARATION OF MEDICAMENTS FOR THE TREATMENT AND PREVENTION OF DIABETES ASSOCIATED WITH HYPERTENSION” relates to the drug.

In an Opposition to the Patent Application issuing, the Deputy Commissioner, Ms Jacqueline Bracha, has ruled that the combination of two active ingredients, each individually known for treating high blood pressure, into one pill for ease of dosage is not inherently inventive where the separate efficacy of the active ingredients is known, as are other two component pills for treating hypertension. Though claimed by applicants, there is no evidence of a synergy between the active ingredients.  The Patent Application is therefore ruled not patentable in Israel and significant costs were awarded to Teva and Unipharm. We expect that the decision will be appealed. This decision may have a knock on effect regarding patents for the same drug abroad and may encourage Teva to proceed with at-risk launches of generic competitors in other jurisdictions.

A translation of the ruling follows:

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Bon Bon

November 3, 2016

Israel Trademark Application No. 267718 is for the mark Bon Bon showed alongside this paragraph. The mark covers Cocoa; sugar; flour and preparatiobon-bonns made from cereals, namely cereal-based snack food, high-protein cereal bars; pastry; confectionery made of sugar, namely candy, sweets, pralines, chocolate, pastilles [confectionery], halvah, waffles; honey in class 30, and was filed by Open-Type Joint Stock Company “ROT FRONT”, a Company registered in the Russian Federation.

The registration included the following limitation: The mark is limited to the colours word Purple, dark purple, light purple and white. as shown in the mark.

The application is a national stage entry of International Application Number 1213719 that included Israel as one of the designated countries.

On 14 February 2016, and in accordance with Section 56f of the Israel Trademark Ordinance 1972, a notice of acceptance was sent to the International Office of WIPO, conditional on no oppositions being filed prior to 29 May 2016.

On 19 May 2015 an opposition was filed by ARCOR S.A.I.C. and on 26 May 2016, a further opposition was filed by Colombina S.A., both in accordance with Section 24 of the Ordinance and with regulations 35 to 46 of the Trademark Regulations, 1940. Consequently, a memorandum regarding the Oppositions was sent to the International Office under Section 56f(ii) of the Ordinance. As per Section 56e(ii) of the Ordinance, copies of the Notices of Opposition in Hebrew were attached to the memorandum.

The Applicant has two months to file a counter-statement in response to the Notices of Opposition, i.e. until 19 September 2016 and 26 September 2016 respectively. Until today, no response from the Applicant has been received. Since the time period defined in regulation 37 has passed and in accordance with Section 24e of the Ordinance, the Applicant is considered as having abandoned the application. Therefore the mark is considered as abandoned and the 267718 file is closed. The Trademark Division will inform WIPO accordingly.

 Re Israel Trademark 267718, Closure of File by Ms YaaraShoshani-Caspi, 7 September 2016