Patent Attorney Round Table

February 14, 2017

knights-round-table-1

The Patent Office is hosting a round table on 21 March 2017 between 2 PM and 6 PM to discuss regulating the patent profession.

Background

In September 2016 the Israel Patent Office called for comments concerning proposed legislation to regulate the patent profession.

The official position of the Association of Israel Patent Attorneys is based on the Code of Ethics for Attorneys at Law. It was drafted by attorneys-at-law working for the Reinhold Group, who are not themselves patent attorneys.

I have written up a list of issues that I consider need regulating, see here and here. To my mind, treatment of trainee patent attorneys is a critical issue and so is the limits of the profession. At present, there are a large number of non-licensed service providers that ‘help’ entrepreneurs obtain patent protection. Some are foreign attorneys practicing in Israel opposite foreign patent offices, and others are not licensed anywhere but offer renewal services, portfolio management services and other services.

In general, one can expect the profession to be expansive when interpreting the law forbidding those not licensed in Israel as either Attorneys-in-Law or Patent Attorneys. Those that are not licensed tend to construe the law more narrowly and may see themselves as not being able to formally represent clients opposite the Israel Patent Office during patent prosecution, but see no reason not to draft applications for the Applicant to file directly, no reason not to handle renewals, not to offer search services and no reason not to prosecute patents abroad on behalf of Israeli applicants.

The problem is, of course, when something goes wrong.

The lines are currently blurred. For example, I was surprised to note that a company calling itself Patenting Solutions that is headed up by an ex-paralegal, now CEO, is now the official address of record for an Israel issued patent. This seems to imply that the Patent Office recognizes one of these cowboys non-licensed practitioners.

I would NOT advise bona-fide licensed practitioners to rely on their professional organizations to look out for their interests, and I particularly urge small firms of licensed patent attorneys and sole-practitioners to come along. That said, I urge ALL interested parties to attend the round table, including those not licensed in Israel, such as US giants like Finnegan. Registration is by the following email: TamarK@justice.gov.il.

 


Seeking a New Commissioner

February 12, 2017

Friday’s Idiot Achronot had an advertisement to the effect that the Ministry of Justice was looking for candidates to serve as the Head of the Patent Authority – The Commissioner of Patents.

More details can be obtained using ‘Chat’ at http://www.csc.gov.il

Applicants should download and fill out form 584 and a questionnaire on the website. In addition to the form and questionaire, Applicants are invited to submit a CV, recommendations, certificates of qualifications and other documents that indicate their suitability.

The final date for submission is 21 February 2017.

COMMENT

The last time the Ministry of Justice went on a Commissioner Hunt was in November 2010. I don’t know if Commissioner Kling is intending to go back to private practice, has been appointed to the Supreme Court or is intending to explore where no man has gone before him. I also don’t know if he’s given notice, has received his marching orders, or if the contract was only for 7 years.

Candidates are expected to have 10 years of practice since being licensed as attorneys by the Israel Bar, and should have IP experience and knowledge. Since the deadline for submission of candidateship is only a couple of weeks away, I suspect that the committee has a preferred candidate in mind, but do not have any idea who that is. I wonder if Deputy Commissioner Ms Jacqueline Bracha is putting forward herself as a candidate? Maybe it is time for a woman to serve in this illustrious position?

I think that coming after Dr Meir Noam, Commissioner Kling had a hard act to follow, but has done admirably well. The Israel Patent Office is now fully computerized and Patent Attorneys can submit Applications and other documentation on-line. There is greater transparency in the patent, design and trademark examination process (although we doubt the appointment of a Commissioner will be a transparent process). The patent office hosts periodic round tables and seminars to educate the profession and to obtain feedback from them. Examination standards seem to be higher and more consistent and decisions and rulings are detailed, and relate to the black letter law, case-law and comparable decisions from the UK, US and EPO.

It is the nature of a blog like this to point out apparent inconsistencies and what we consider to be poor rulings, but these are isolated instances. The overall picture is healthy. There have even been recent instances of patent attorneys who have moved from private practice to working as Examiners.

We wish all candidates the best of luck!


Frankenstein’s Monster

February 6, 2017

265232.pngIt sometimes happens that a second applicant files a similar trademark application to a previously filed mark that is pending. in such cases, a competing marks proceeding is initiated. the first to file gets some credit for so doing, but the main issue in determining which mark goes on for examination is the amount of usage by the two parties and good faith, or rather bad faith.

If one party is guilty of inequitable behaviour, their application will almost certainly be stayed. Where there are genuine independent filings of two applications for the same or very similar mark by different applicants, such that the second mark is filed before the first one is registered and they are co-pending, then the more widely used, better known and more intensively advertised mark proceeds to examination, and only once this mark is allowed or canceled, does the second mark  proceed to examination, where, in all likelihood, the registration of the first to be examined mark will prevent the registration of the second mark.

frankensteinIP Factor was approached by Best Foods Ltd. to file the logo shown above as a trademark application in classes 29 and 30. An application was filed and received the Application Number  IL TM 265232.

Prior to this being allowed, a second applicant, a Mr Doron Frankenstein filed Israel TM Application 261955 for the identical mark in the identical classes and so, on 10 May 2015, a competing marks proceeding was initiated as per Section 29 of the Ordinance.

On 4 November 2015, the parties were given three months to file their evidence, and were informed that failure to do so would result in their application being considered withdrawn and their application canceled as per regulations 24 and 25.

Best Foods Ltd cooperated with us and we filed their evidence. However Mr Doron Frankenstein did not file evidence and on 1 January 2017, the Trademark Department of the Israel Patent Office gave his attorneys were given seven days notice to file their evidence or their application would be deemed withdrawn.

Essentially Regulation 22 provides a three-month period for providing evidence, and authorized the Commissioner to cancel the application if no evidence is filed, or to grant an extension if reasonable to do so. Regulation 24(b) states that if the conditions of Regulation 22 are not met, the Application is considered as canceled, and the Applicant is informed accordingly.

The period for providing evidence was 14 February 2016 which is long past, so Israel TM Application 261955 to Frankenstein is considered withdrawn, and costs of 2000 Shekels are awarded to Best Foods Ltd. Application Number  IL TM 265232 was examined and has now been allowed.

COMMENT
It seems that Mr Frankenstein was a distribution agent for Best Buy Ltd. It could have been interesting to see who would have prevailed in a competing marks proceeding in such a case, i.e. whether the distributing agent may be entitled to rights in a mark registered locally. However, in this instance, since no evidence was filed, the substantive issues were not addressed.


Best Practices in Intellectual Property 2017

January 25, 2017

IPRIPR (Intellectual Property Resources) is hosting their Best Practices in Intellectual Property 2017 Conference.

This will be the fifth annual Best Practices Conference, which organizers claim will be the most complete and comprehensive conference in Israel in 2017. It is a little early to determine whether this claim will be found to be accurate, but it may well be.

The follow on line “providing you with knowhow and practical tips in the rapidly changing and evolving world of corporate intellectual property practices” is certainly true.

The conference features speakers that are the heads of IP strategy and patent counsels from Google, Microsoft, Intel and Philips. As in previous years, the conference will be held in the Sheraton Hotel, Tel Aviv on March 27th There is a second day of master-classes on March 28 which will cover specific topics.

For more information, see here.


ITC To Investigate Patent Infringement Claim Against Sandisk

January 22, 2017

sandisk-memory-cardsApart from via the courts, there is a separate route for seeking justice against patent infringers. It is possible to bring a complaint to the US International Trade Commission (ITC).

Memory Technologies, a subsidiary of non-practising entity Pendrell Corporation brought such a complaint against Sandisk on December 6, 2016, which was amended on December 12, 2016 and supplemented on December 27, 2016.

The complaint alleges violations of section 337 of the Tariff Act of 1930 in the importation into the United States and sale of certain flash memory devices and components thereof that allegedly infringe patents asserted by the complainant.

The ITC has decided to investigate whether Sandisk’s SD cards and microSD cards for use in cameras and other electronic devices infringe Memory Technologies patents.

 


Copyright in Multiple Choice Test Questions

January 20, 2017

multiple-choice-2In Israel, to obtain a driving license, the wannabee driver has to pass both theory and practice exams and then to drive with an experienced driver riding shot-gun.

Periodically, drivers have to do refresher courses, even if they don’t have points on their license for traffic offences.

The system is far from perfect in that annually there are plenty of traffic offences and people killed in traffic accidents. Israel is a Mediterranean country and this affects the attitude of drivers, but I digress.

Borsy is a Publishing House that has a monopolistic license from the government to generate and distribute driving theory multiple choice questions.

Derekh (Way) has a website that teaches driving theory.

multiple-choice-1

Borsy sued Derekh for copyright infringement claiming that it publicized multiple choice questions (known in Israel as American testing) cribbed from Borsy.

A magistrate’s court ruled that Derekh did indeed copy multiple choice questions, sometimes with minor changes in wording, or use of synonyms. It rejected a defense offered by Derekh that they were operating under an agreement with Borsy, and ordered Derekh to pay Borsy 85000 Shekels in compensation.

Comment

  • A few years ago, the Israel Supreme Court overturned a ruling for copyright infringement in grammar text bookscopyright infringement in grammar textbooks.  Frankly, I am not a great fan of either unique government licenses to make up tests of this nature, or to extend copyright to include synonyms and minor changes of wording.  There are a limited number of multiple choice questions that can be based on the highway code. Reproducing road signs may itself be copyright infringement. However, the real question is one of policy. Do we want monopolies in this area?

LES Event on Copyright for Software

January 17, 2017
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INVITATION TO A LES ISRAEL EVENT
LES Israel is hosting an event on Monday,January 30th, 2017, at IBM Israel Ltd., 94 Derech Em-Hamoshavot Petach-Tikva, at 09:00am.
 
The event will be dedicated to the topic “Rights in Software”
 
The topic will be presented, as follows:
 
Part A: Lectures
  • Ziv Glazberg, Patent Attorney and Advocate (Ziv Glazberg), a Partner atG&A Glazberg, Applebaum & Co., a law and patent firm, will speak on “Patent Protection for Software”;
  • Eran Bareket, Advocate (Eran Bareket), a Senior Partner at Gilat, Bareket & Co. of the Reinhold Cohn Group, a law and patent firm, will speak on “Copyright for Software – Protection and Exceptions”; 
  • Haim Ravia, Advocate (Haim Ravia), a Senior Partner, Chair of the Internet, Cyber & Copyright Group at Pearl Cohen Zedek Latzer Baratz, a law and patent firm, will speak on “Alternative Use of Copyrights in Software and Digital Content”
Part B: Panel
 
Moderator: Suzanne Erez, Patent Attorney and Advocate(Suzanne Erez), IPLaw Counsel, EMEA IPLaw – Israel, Research, IBM;
 
o   Einav Zilber, Patent Attorney and Advocate (Einav Zilber), Director, Global Law Department, Intellectual Property Counsel, Applied Materials Israel and Applied Materials India;
o   Yoav Alkalay, Patent Attorney and Advocate (Yoav Alkalay), Head of IP, Amdocs;
o   Ben Haklai, Advocate (Ben Haklai), Commercial (Legal) Lead, Microsoft Israel;
o   Hananel Kvatinsky, Patent Attorney (Hananel Kvatinsky), Director of Intellectual Property, Orbotech Ltd.;
o   Ori Buberman, Advocate (Ori Buberman), Head of Intellectual Property, Mobileye Ltd.;
 
The event is free to LES Israel members.
Non-members: NIS 50 charge.
 
Registration is by email to les_israel@yahoo.com.