Patent to Astrazeneca  Successfully Opposed by Teva

April 20, 2017

Rosuvastatin_structure.svgRosuvastatin is a member of the statin class of drugs that is used in combination with exercise, diet, and weight-loss to treat high cholesterol and related conditions, and to prevent cardiovascular disease.

Israel Patent IL 166626 to Astrazeneca is the National Phase of PCT/GB2003/003463 filed in August 2003 and titled ” Process for preparing the calcium salt of rosuvastatin 

The Application was allowed and published for opposition in September 20011 and Teva filed an Opposition. A hearing was held in July 2015, and by June 2016 both sides had finished submitting their summaries and counter summaries.

The patent covers a process for obtaining (E)-7-[4-(4-fluorophenyl)-6-isopropyl-2-[methyl(methylsulfonyl)amino]pyrimidin-5-yl](3R,5S)-3,5-dihydroxyhept-6-enoic acid calcium salt. The application included 27 claims of which the first, independent claim is as follows: Read the rest of this entry »


Cancellation Proceedings Against an Israel Patent for a Modular Support Bracket

April 6, 2017

Figs for ACMoshe Lavi registered Israel Patent No. 157035 titled “MODULAR SUPPORT BRACKET”. A competitor, Zach Oz Air Conditioning LTD and Zach Raz filed to have the patent cancelled on grounds of invalidity. They seem to have botched the attempt, but I think that this ruling is a poor one.

Background

In the past, Lavi has tried enforcing the patent against Zach Oz Air Conditioning LTD. (Back then, around 2004, I was engaged as an expert witness by Counsel of the Defence, Soroker Agmon. In my Expert Opinion, I argued what is known as ‘the Gilette Defense’ stating that the correct interpretation of the claims was much narrower than that which Lavi and his lawyers Pearl Cohen Zedek Latzer Bratz (Pearl-Cohen) was using and Zach Oz’ support bracket was not infringing. Furthermore, if one considered that Zach Oz’ brackets were within the ambit of the claims, the patent would not have issued in the light of the myriad of prior art shelf support brackets.  On the day of the trial, Lavi dropped the charges and Zach Oz agreed not to infringe the patent.

It was not the first time that Pearl-Cohen have tried to assert a patent against a competitor that was not infringing. They tried this in the US on behalf of Source Vagabond against Hydropak. In that instance, the New York District Court fined Pearl-Cohen and the lawyers actively handling the case $187,308.65. That ruling was then Appealed to and upheld by the Federal Circuit Court of Appeals).

Frustrated by repeated bullying by Moshe Lavi and Pearl-Cohen, Zach Oz filed a cancellation proceeding against the Israel patent. Confusingly, their Attorney is called Pearl. It is not Zeev Pearl, but another practitioner.

Pearl-Cohen submitted a rather ambitious attempt to have the case thrown out as Zach Oz had not argued invalidity when accused of infringing, and Pearl-Cohen argued that this was a sort of in absentia estoppel since they could have raised the argument back then, and didn’t. The Commissioner threw that argument out, and allowed the cancellation proceeding to proceed.

The cancellation proceeding has now run its course and the following article Read the rest of this entry »


Patent Office Closures for Pesach

April 2, 2017
seder table
Because of the upcoming Pesach (Passover) holidays theIsrael Patent and Trademark Office (ILPTO) will be closed from Monday, April 10, 2017 – Monday, April 17, 2017 (inclusive).
In general, when a deadline falls on a day that the patent office is closed, the deadline is extended to the first subsequent working day, so any deadline for submissions, including PCT applications, national phase entries and Paris Convention deadlines falling from 10th April to 17th April can be submitted on 18th April 2017.
Note, the Patent Office is always closed on Fridays and Saturdays so will be closed on 7th and 8th of April, BUT since Sunday is a regular working day and so deadlines falling on 7, 8 or 9th April must be filed on 9th April.
Additional Israel Patent Office closures are as follows:
  • Israel Independence Day on Tuesday, May 2, 2017
  • Shavuot (Pentecost – the Feast of Weeks) –  Tuesday, May 30, 2017 and Wednesday, May 31, 2017.

Patent Application for Jokes

April 1, 2017

101USSN 2006/0259,306 titled “Business method protecting jokes” has 25 claims and lists Timothy Roberts as the inventor.

Section 35 U.S.C. 101 is the part of US Patent Law that considers patentable subject matter. The Law states:

“Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.”

Over time, the US Supreme Court has interpreted this statement to determine practical borders of what can and cannot be patented have changed.

For Example, in Diamond v. Chakrabarty, 447 U.S. 303 (1980), the Supreme Court Ruled that microbes for breaking down crude oil were patentable.

Chief Justice Warren E. Burger who wrote the decision, and had the support of the majority of the Supreme Court, including Justices Stewart, Blackmun, Rehnquist, and Stevens, wrote:

We have cautioned that courts “should not read into the patent laws limitations and conditions which the legislature has not expressed.” United States v. Dubilier Condenser Corp, 289 U.S. 178 (1933).

Regarding the scope of the original legislation, he wrote:

In choosing such expansive terms as “manufacture” and “composition of matter” modified by the comprehensive “any”, Congress plainly contemplated that the patent laws would be given wide scope.

Plagiarizing Ecclesiastes 1:9, Burger found that Congress had intended patentable subject matter to “include anything under the sun that is made by man,” he concluded:

Judged in this light, respondent’s micro-organism plainly qualifies as patentable subject matter. His claim is … to a non-naturally occurring manufacture or composition of matter—a product of human ingenuity.

In State Street Bank and Trust Company v. Signature Financial Group, Inc., 149 F.3d 1368 (Fed. Cir. 1998), the principle was established that any “useful, concrete, and tangible result” was patentable, opening the door to business method patents.

Since then, the pendulum has swung back and in 2008, in In re Bilski, the Federal Circuit decided to reconsider State Street en banc and jettisoned the “useful-concrete-tangible result” (UCTR) test stated in State Street, but it did not explicitly overrule State Street in its entirety. The court said that the UCTR test “is insufficient to determine whether a claim is patent-eligible under § 101,” and “is inadequate,” and it reaffirmed that “the machine-or-transformation test outlined by the Supreme Court is the proper test to apply” instead. As to State Street, the court said, “those portions of our opinions in State Street, relying on a ‘useful, concrete and tangible result’ analysis should not longer be relied on.

However, the Federal Circuit’s majority opinion did not hold that business methods are categorically patent ineligible.

The Supreme Court affirmed the judgment of patent ineligibility in Bilski v. Kappos. It did not endorse the use of the machine-or-transformation test as the sole test, but said it was only a “useful clue” to making the determination.

The Court’s majority also declined to hold business methods categorically patent ineligible. Four Justices, however—Justice Stevens, concurring, joined by Justices Breyer, Ginsburg, and Sotomayor—would have held all business methods patent ineligible, on the basis of the historical background of the patent clause of the Constitution. In a separate concurring opinion by Justice Breyer, he listed points on which the Court unanimously agreed. One point was that the State Street Bank case was not a correct statement of the law.

The Supreme Court’s subsequent decisions in Mayo v. Prometheus and Alice v. CLS Bank further expanded on Bilski and substantially obliterated State Street. These decisions established a two-step inquiry in which, first, the court is to look to whether the claimed invention is directed to an abstract idea or natural principle; if it is, a second step follows in which the court must determine whether the claimed invention implements the abstract idea inventively or instead in a merely routine or conventional manner. Unless the implementation or application of the abstract idea embodies an “inventive concept,” the claimed invention is patent ineligible. (These concepts are explained further in the articles on the Mayo and Alice cases.) Under this test the State Street patent would be invalid.

Alice specifically holds that a generic computer implementation of an abstract idea is patent ineligible. In Alice, the Supreme Court held that a software-related invention on an existing business procedure could not be saved from patent ineligibility and be made patent eligible simply by saying, “Do it with a computer.” Instead, it would be necessary to implement the procedure in an inventive manner. This decision appears to have overruled State Street as called for in the eBay dissent.

Inventor’ Andrew Knight has several United States published patent applications for the storylines of movie plots. So far his portfolio includes four patent applications that variously published in November and December of last year. They are all entitled “Process of relaying a story having a unique plot”. The main claim of United States Patent Application Number US2005/0282140 reads as follows:

“A process of relaying a story having a timeline and a unique plot involving characters, comprising: indicating that a first character experiences de-ja-vu to mask an actual event.

United States Patent Application Number US2005/0272013 claims:

“A process of relaying a story having a timeline and a unique plot involving characters, comprising: indicating that a first character voluntarily enters a virtual reality; indicating a belief by said first character that said first character is not in virtual reality; and indicating that an interaction in virtual reality between said first character and a second character, while said first character has said belief, causes said first character to labor for, at most, a compensation substantially lower than a market value of said first character’s labor.”

So is USSN 2006/0259,306 titled “Business Method Protecting Jokes” patentable? Well it depends on the constitution of the Supreme Court and on guidelines provided by President Trump who seems determined to reverse the American Invents Act championed by O’bama.


DIY Patent Filing

March 30, 2017

brain surgery

Sometimes clients want to save on professional fees. The truth is that quality patent attorney work is not cheap. Patent Attorneys only have so many hours a day and set their fees to maximize income.

Filing abroad may seem to be overly expensive. More and more often I am approached directly by overseas inventors wanting to file national phases into Israel of their PCT applications, thereby trying to save on their local attorney fees.

Probably because of this blog, I also seem to receive more than my fair share of requests for help from inventors trying to file directly into Israel using the online interface. I don’t think that DIY filing is a good idea. Like many such things, one learns how not to do it by making mistakes. Most of the time, the inventors give up and pay me to file for them and also give me Power of Attorney.

Recently someone contacted me via the blog and by the time I got back to him, he’d managed by himself. So he has a number and filing date. I wonder if he will receive Office Actions without an address in Israel. From his name, I am fairly sure that he was not Jewish (well he may have been a converso as I believe was his namesake who (re)discovered the New World in 1942), and so suspect that he will have a problem with correspondence in Hebrew even if he does receive it.  Each to his own.

Today I was contacted by someone in India who filed directly into Israel and only had trouble paying the official fee, and wanted my to help them, and were sure that I’d do it for $150 dollars since they had another two cases in the pipeline.  Well I looked at the Application and noted that although they managed to courier the application with forms to the Patent Office within 30 months of filing, to receive a filing date they needed to pay the fees in 30 months.  That deadline passed nearly a month ago. I quoted for preparing affidavits and submitting a request for late filing and my estimated charge is more than I take for filing national phase applications. I also warned them that the standard for late entry into Israel is “Due Care”. Is waiting until the last-minute and then trying to file directly without professional assistance in a foreign country via an interface in a foreign language, Due Care? Well, if they are willing to pay my fees, I will argue that it is to the best of my ability. I did, however, warn them that it may be difficult to convince the Commissioner of Patents that due care was taken.


Unipharm Successfully Opposes Novartis Patent for Panobinostat Lactate Salts

March 26, 2017

PanobinostatThis ruling relates to an opposition against a patent application by Novartis for Panobinostat  which is a hydroxamic acid  that acts as a non-selective histone deacetylase inhibitor (pan-HDAC inhibitor).  On 23 February 2015 the drug received FDA accelerated approval for use in patients with multiple malignancies, and on 28 August 2015 it was approved by the European Medicines Agency for the same use.

The Opposer claimed that the drug was described in the Applicant’s earlier published PCT application and was thus both anticipated (known) and obvious. The Commissioner rejected the anticipation claim but accepted that in light of the earlier publication, it was obvious and lacked an inventive step.

Due to the ruling being rather interesting but only available in Hebrew, and since these Israeli rulings can and do have an effect on validity of corresponding patents elsewhere, I have translated the decision in full. At the end I have made some general comments.

Background

NovartisNovartis AG filed Israel Patent Application Number 195087 titled “ANHYDROUS LACTATE SALTS OF ANHYDROXY-3-[4-[[[2-(2-METHYL-1HINDOL-3 YL)ETHYL]AMINO]METHYL] PHENYL] – 2E-2-PROPENAMIDE AND PHARMACEUTICAL COMPOSITIONS COMPRISING THE SAME” as a national phase of PCT/US2007/070558 that was filed on 7 June 2006 and claims priority from US 60/804523 and US 60/869993, two US provisional patent applications filed in June and December 2006 respectively. The Israel national phase entry was submitted on 3 November 2008 and, on allowance, published for opposition purposes on 31 October 2012.

UnipharmUnipharm opposed the application on 3 January 2013. Subsequently, on 26 June 2013, Novartis requested to correct the application and, since neither Unipharm nor anyone else opposed this, the application was corrected and this ruling concerns an opposition to the amended application.

The parties submitted their claims and evidence and a hearing was held Read the rest of this entry »


New Israel Commissioner of Patents and Trademarks Appointed

March 19, 2017

Ofir AlonThe Minister of Justice Ayelet Shaqued has appointed Attorney and Patent Attorney Ofir Alon as the new Israel Commissioner of Patents, Trademarks and Designs to replace Commssioner Asa Kling who is coming to the end of his six year tenure.

Ofer Alon has degrees in Computer Science and Law from Haifa University. He qualified in IP Law in the Law Offices of Richard Luthi where he worked until 2006 and then became the IP Director and In-House Counsel of “On Track innovations”. Since 2010, Adv Alon has served as the head of Intellectual Property for the Technion’s R&D Tech Transfer Company.

The appointment follows the advice of the Committee for Finding a Suitable Candidate that was headed by Ms Ami Palmor, Director of the Ministry of Justice. Other committee members include Ilan Ram the Director of the Senior Civil Servants Organization, the Chief Scientist Avi Hasson, Professor Orit Fishman Afori – Dean of the Law School of Michlelet Minhal and Academic Representative and Retired Justice Izaak Engelhard serving as the public representative (which seems innappropriate to me – judges can represent the judiciary. The public is best represented by the layman. Maybe in this instance, a local serial inventor?).

According to the press-release, the committee were impressed with his developed views and vision regarding the Patent Office, its activities and its challenges, and with his plans for its international activities.

Comment

We note that with the appointment of Outgoing Commissioner Asa Kling the make up of the committee remained confidential. This led to rumours of cronyism between the judge allegedly chairing the committee and Judge Kling, the commissioner’s father. I cannot comment on whether these rulings were well-founded or baseless, but was very impressed with the outgoing commissioner’s rulings.

In this instance, the identity of the committee members has been published. We see this as a welcome step towards greater transparency. We are pleased that the committee were impressed with Adv Alon’s plans, however the press-releases do not explain what these plans are. We also do not know whether any other candidates were considered and if so, who the other candidates were. What was clear was that the published advertisements in the newspapers gave very short deadlines from responding, raising suspicions that this was a political appointment. A candidate with vision and proven management skills seems a very good idea. He will however also require judicial competence.

Mover-and-Shaker Kim Lindy claims to have helped Ofir Alon receive his appointment to the Technion Tech Transfer Company. However, she denies having influenced his appointment as commissioner.

In general, I am impressed with Minister Shaqued’s judicial appointments and her attempts to broaden the Supreme Bench to be more representative and heterogeneous. I also think the Commissioner should be more or less formalistic in his approach to IP rulings. That said, I have no ideas what Ofir Alon’s views are regarding IP issues or indeed, on other legal or political issues.

under the watch of the last two commissioners the Israel Patent Office has been revolutionized, and it is now fully computerized. There is pending legislation concerning designs, and proposed legislation to put the profession of patent attorneys onto a stronger legal footing. The patent office is now a profit generating, efficient and professional body. We wish the new commissioner luck and hope he takes the organization forwards to new heights.