Cumulative Innovation in Patent Law

December 6, 2017

Veteran IP lecturer at ONO Academic College, Dr Ofer Tur-Sinai has written a book called Cumulative Innovation in Patent Law or rather אמצאות עוקבות בדיני פטנטים.

Apparently the subject matter is inventions that are based on patented inventions, and the need to prevent the patent system hindering rather than promoting technological development.

Intrigued? I am. I therefore intend going to the launch on 2 January 2018 at ONO Academic College.

The speakers include Judge Professor Grosskopf and various IP lecturers. It looks like a thought provoking program.

ONO conference

Registration may be achieved via this link.


An Attempt to Cancel Patent For Breaking GSM Standard Algorithm

September 27, 2017

GSM logoDr Elad Barkan invented or discovered a cryptology method for breaking GSM coded communications and filed a patent application on 30 April 2003 titled “Cryptanalysis Method and System”, which was awarded Israel Patent No. IL 155671 in June 2005. The method was based on the discovery of a fundamental coding flaw in the GSM protocol which caused quite a stir among both telecommunication experts and the cryptology community.

DiscoveryOn 23 June 2015, Rontal Engineering Applications 2001 Ltd applied to have the patent cancelled on various grounds including that it was a discovery and not an invention; that the supplementary tests of inventiveness were met so that there was no inventive step, and that the patent was never implemented. In a long and detailed decision, Deputy Commissioner Ms Jacqueline Bracha considered the various allegations and ruled on the validity of the patent registration.

After the statements of case and the evidence were submitted, a three-day hearing was scheduled in December 2016, and the parties then submitted written summations.

Complicating matters, during the summation stage, the Opposer, Rontal Engineering Applications 2000 Ltd, filed for bankruptcy. Dr Barkan submitted a request that Rontal Engineering post a bond for 200,000 Shekels, to pay his legal fees should he prevail against them. The Deputy Commissioner agreed with his request and a bond was posted duly on 15 July 2017.

Somewhat unusually, the ruling starts with a list of definitions of various words relating to the GSM protocol. Then the decision goes on to rule if the invention relates to patentable subject matter.  In a 46 page ruling with 165 paragraphs, the Deputy Commissioner found that the invention is patentable per se. Furthermore, the invention described is substantially different to the closest prior art so the patent was upheld.

In my conclusions at the end of this article, I conclude that the Opposers could probably have successfully obtained their real objective by negotiating a claim restriction to exclude brute force attacks which were never intended to be covered by the claims anyway.

A summary of the Decision follows.

Glossary

The patent relates to GSM encryption, and to understand the case, a number of terms need to be defined.

GSM NETWORKGSM is an acronym for Global System for Mobile Communications. It is a standard for cellular phone networks developed in 1987 and available since 1992. The standard was published before the priority date. The standard is a digital telecommunication standard and voice is digitized, transmitted and then converted back into sound. GSM is encrypted to prevent third parties from eavesdropping. The communication takes place via base stations.

Read the rest of this entry »


From Maimonides to Microsoft: the Jewish Law of Copyright Since the Birth of Print

December 18, 2016

from-maimonides-to-microsoftFrom Maimonides to Microsoft: the Jewish Law of Copyright Since the Birth of Print is a book written by Neil Weinstock Netanel, with Notes by David Nimmer Oxford University Press, 2016 ISBN 9780195371994, hard cover, 336 pp. Price: £65.00

I have written a formal review for the Oxford Journal of Intellectual Property Law and Practice. The review is available in text form here and as a PDF here.

I found the book a thoroughly interesting read and would recommend it is a Chanukah present for Intellectual Property academics and practitioners with an interest in Jewish Law.

 

 


Goldberg Prize for IP Paper in Hebrew

December 11, 2016

prize-money

Tel Aviv University’s Shin Horowitz Institute for Intellectual Property in the name of Amnon Goldberg has issued a call for papers for the Goldberg Prize for IP Paper in Hebrew. The deadline for submission is 1 February 2017. There are two categories: researchers can win a 4000 Shekel prize and students can win a 2000 Shekel prize. For more details see here: goldberg_prize


IP Conference in Memory of Arnan Gabriel

March 28, 2016

Seligsohn Gabrieli & Co., together with the Haifa Center of Law and Technology are hosting what seems intended to become an annual event in memory of Arnan Gabrieli.

The conference seems to be in Hebrew. It is titled “קניין רוחני באינטרנט: הזדמנויות וסיכונים” which means IP on the Internet, Opportunities and Risks.

The event is scheduled for April 5, 2016, with registration at 4 PM.

Awards will presented to students, in memory of Adv. Arnan Gabrieli.

Professor Eric Goldman, the Director of the High Tech Law Institute, Santa Clara University School of Law, USA will speak on “Trademarks on Social Media” the language is not specified.

This will be followed by a session chaired by son-and-heir, Nahum Gabrieli on “Music Copyright, the Future on the Web”. The panelists include Professor Niva Elkin Koren of Haifa University, Law blogger and Adv. Chaim Ravia and Ms Orli Freund Maya, legal counsel of AKUM, the collecting society for Israel music.

I understand that the event is to be held at the Interdisciplinary Center, Herzliya.

COMMENT

Arnan was a leading IP lawyer, scholar and part time lecturer who litigated a number of Israel’s leading IP cases. I did part of my training in the firm, and subsequently managed the patent and design department that was formally headed by semi-retired patent attorney (and Rabbi) Alfred Thee before setting up on my own. I owe a lot to the firm for what I learned there.

An obituary to Arnan Gabrieli may be found here.

This combination of student awards and a conference directed to cutting edge IP issues seems a fitting tribute.


AIPPI Conference, Constructive Criticism

March 27, 2016

excellent

I very much enjoyed the AIPPI conference last week. It had a good balanced program, with interesting presentations by active and by retired judges from the courts, by two senior Government Ministers (Justice and Health) who each spoke briefly, presentations by the Commissioner and Deputy Commissioner, by local and foreign patent professionals, judges and academics. The event as a whole almost ran to time thanks no doubt to meticulous planning by Dr Ilan Cohn, Tal Band and Dorit Korine who are to be congratulated on putting together a very enjoyable and varied program with generally good speakers covering interesting topics. There were parallel sessions offering something to everyone. Patent Attorneys could have furthered their education by attending patent related topics including valuation, claim construction for medical devices, US practice and the pros and cons of the Unitary Patent. Furthermore, the refreshments were delicious.

For a tongue-in-cheek review see Megillat AIPPI.

Nevertheless, the conference could have been even better. The attendance was poor and many firms were totally unrepresented. Others, who had a speaker or panel moderator, sent that person, who typically did not stay for anything else. I did not see any IP lecturers from any of Israel’s universities or law schools, apart from the one or two who were presenting.

I promised not to criticize anything on this blog prior to the conference. Indeed, I plugged it several times and even noted it was happening in my last newsletter, which has a large circulation. Now that it has been and gone, I am publishing some reflections. I hope that others take heed and consider what I write.

Participants, Cost and Program

cost benefits

There was an impressive 600 participants claimed in advance to sponsors such as myself. At the time the organizers said 350 on first day and 320 on second day. The organizers won’t provide me with a list of registrants, not as a sponsor (unlike what typically happens at other conferences) and not as a blogger. Consequently I can’t varify the numbers. Nevertheless, based on a quick count in the various halls and coffee area, I think that these numbers more modest numbers are inflated as well. Such a turnout is impressive for an Israel IP event, if less so for what was billed as an International IP Event.

That as may be, what was clear was that several firms were not represented at all. Some senior partners of other firms attended, particularly if they were chairing sessions. Very many practitioners did not attend. The local IP lawyers and patent attorneys are a well-defined, easy to reach demographic. If they didn’t turn up then either the publicity was bad or the program was somehow not attractive.

For several years now, I’ve watched many entrepreneurs, some with a high level of knowledge in their field, trying to bring their product to market. those that succeed are not necessarily those who can do everything themselves. A knowledge of personal limitations and involvement of others is a tried and tested strategy. This AIPPI conference required financing, organizing speakers and a balanced program, branding and marketing. I think what let it down was poor branding and marketing.

Under the auspices of the AIPPI this conference should have been seen by IP practitioners and academics as their event. It wasn’t perceived that way so people didn’t come. This is a branding failure. A second problem was the marketing. There is a world of difference in making sure that the key demographic groups know that an event is happening and making them feel that they want to come.

Note, I could simply focus on the program or the refreshments in this blog. The conference itself took that approach by stressing Israel’s Start Up Successes, and ignoring the vast majority of start ups that fail and Israel’s problem in growng and maintaining stable mature companies. So this blog has value, I will relate to other aspects. Maybe someone out there will heed what I say to the benefit of all.

Whova

Hoover

Going through the list in the totally superfluous App I noted that it included about 120 speakers and very large contingents from Reinhold Cohen (39) and Teva (23). This is not a bad thing. These are all practitioners that can learn from the program who are all welcome. The problem is that when one subtracts these from the totals and notes that there is a relatively small number of participants from abroad who are mostly Jewish attorneys who have local clients, work with local firms and are timing one of their regular visits., including many old friends and associates that I am delighted to see and that there were many Israel Examiners who came along for free to make up numbers, it is clear that the event did not attract the employees of very many local firms.

The event was blogged on the IPKAT and on this forum. Publicity was sent out via the various trade organizations. I doubt that much more could be done to attract foreign professionals. Especially in the less than favorable security climate.

bums on seats

Bums on seats…

What concerns me is that there was a low representation of the key demographic, i.e. Israeli patent attorneys, IP lawyers  and academics. I talked to some who didn’t register. There are those who are simply not interested in IP conferences and are too busy working. Others felt the program didn’t match their interests and needs and some felt that the entrance price was too high. One suggested to me that there should be a two tier cost, so that in-house attorneys and IP managers in start ups and those in small firms should pay less. He was willing to forgo the banquet and even bring sandwiches instead of attending the dinners, and the practitioner in question enjoys his food. I don’t know if this approach is realistic. That said, the patent office offers a 60% discount on patent filing fees to small businesses so maybe staggered fees could work.

The committee was heavily stacked with senior partners in large firms and with in-house IP personnel from very large companies. This reflected their choice of speakers which seemed to be senior partners in large firms and in-house IP personnel from very large companies.

It is possible that IP service providers and in-house managers of more modest companies have different needs and interests. If there had been a representation of sole practitioners, recently qualified practitioners – say within three years of qualifying, and indeed, trainees, plus in-house IP managers in businesses that are financially challenged, it is possible that the program and the venue might have been more attractive to the local profession who are the key audience after all.

On the map

In my opinion, the purpose of conferences of this nature should be two-fold.

  1. To showcase Israel and to put it on the IP map, promoting the country in general and its relevance to IP strategy in particular.
  2. To train practitioners, trainees and students. To do so, the first thing is to get them to attend.

Culture and Politics

culture club

The so-called Gala Event featured the following program:

  • Greetings: Dr.Ilan Cohn, AIPPI-Israel, Co-chair of the conference organizing committee
  • Meet leading Israeli Entrepreneurs
  •    Meet leading Israeli women Entrepreneurs:
    • Prof. Ronit Satchi-Fainaro, Sackler School of Medicine, Tel Aviv University
    • Ms. Batsheva Moshe, CEO, Unistream Life Changing Entrepreneurship
  • “QUARTETOUKAN” Arab-Jewish Ensemble
  • Dinner

Now, for a change I am not going to criticize Dr Cohn for greeting. I think that the job of the co-chair is to greet the guests and introduce the speakers.

My issue is with the remainder of the program.  I find relating to women in this way sexist and offensive. So, incidentally, does my wife who has a master’s degree in mechanical engineering and has worked for over 20 years in multinational engineering companies. We respectfully differ on many matters of politics and principle, but on this issue, we concur.

affirmative action

Prof Ronit Satchi Fainaro has a group with 13 active members, 10 of which are women. (of previous workers, one of four has is a male member. Her website shows a group of women researchers with a token man. It does not seem that her choice of staff is based on merit, but rather on affirmative action which is highly sexist. Ms. Batsheva Moshe is indeed the CEO of Unistream. she is not a director and is not the chairperson. Her entrepreneurial activity is not technology related. We can usefully discuss women entrepreneurs fighting for equal rights to conduct services at the Western Wall with ritual accouterments and  this could be quite interesting as well. However, one wonders what it is doing at an IP conference?

Quartertoukan

Quatertoukan – Is this the right cultural statement at this time, for this audience?

More puzzling still is the choice of musical entertainment. We are not merely provided with the name of the band, “QUARTETOUKAN” but are informed that it is an Arab-Jewish Ensemble. In other words, like the underlining of the word women in the speakers, the racial mix of the band was a political statement by the conference organizers.

If we look at the current Knesset and assume that it reflects the population as a whole, I think it is fair to say that none of the parties making up the government would have chosen to have this band playing at one of their events. I suspect that Yisrael Beteinu would not have chosen this band either. In fact, I suspect that Meretz is the only party that would have. (In this regard, I note that the Head of the Labour Party is currently touting the idea of stripping Arabs of their Israeli citizenship half a century after their suburbs were annexed to the state, and building a wall to keep them out).  That as may be, whilst I am all in favour of coexistence and cross-cultural fertilization and personally believe in a one-state solution, annexing the West Bank and giving full democratic rights to Arabs living there, I am aware that this is a minority position.

If we look at the Israeli IP profession, I think it is fair to say that there are at least as high a percentage of Hareidim, religious Zionists and settlers as there are in the population as a whole. What there is a low proportion of is oriental Jews. The number of Arabs is negligible.

TAYLOR-FORCE-FeatureCrop-Screen-Shot-2016-03-09-at-12.38.43-AM-305x172

Taylor Force, May God Avenge His Blood

The choice of music is not one that the profession listens to. The political statement is not one that has wide support in the profession. In the wake of the recent wave of terror attacks with the murder of an American tourist on the beach-front not far from the conference hotel a week ago, and with IP professionals who have lost family members and neighbors to Arab terror, from the Hadassa convoy massacre onwards,  one wonders if this choice is in good taste?

Now only one participant was wearing a hijab. This was an Examiner recruited by the affirmative action policy for government agencies. apart from Dr Sheila Licht, I didn’t notice anyone else that looked Sephardic. (Sure, Yehuda Tseruya is blue blooded Spanish and Portugese, but he’s a British educated Gibraltarian). I don’t think the music selected was aimed at the target audience. It is not what the predominantly Asshkenazic patent profession listens to.

What is an appropriate political statement?

Personally, for a political statement I’d have preferred to see this conference hosted in Jerusalem, our capital city. I assume that an overwelming majoirty of the local practitioners agree that at least Western Jerusalem should stay in Jewish hands. I don’t think doing so would have affected registration levels. When Note, I put my money where my mouth is. My last event was a PCTea party at Cinema City, Jerusalem.

Purim

Purim

In her presentation, Minister of Justice Ayelet Shaked noted that we were not just a start-up nation but also had a long history. Commissioner Kling wished the audience a Happy Purim. He no doubt notes that Israel patent attorneys are mostly Jewish and many are proud of the fact and religiously committed.

hamentaschen.jpg

The hotel served poppy-seed cake at both lunches and there were Danish pastries for breakfast. Two days before Purim, maybe the tradition hamentaschen patisserie might have been appropriate. Would the handful of Indian and Chinese guests have taken offense? I doubt it.

party

If I’d been consulted I would have suggested that the gala dinner be in fancy dress. I think that IP professionals in small firms attended such events to socialize and have  good time. Perhaps this type of approach might have resulted in participants not only registering for the dinner, but also bringing their significant others along.

I have a patent attorney friend who works at TEVA who is a Meretz supporting  self-declared atheist who is intensely critical of the religious establishment. He quite happily posted a photo of himself in fancy dress at a TEVA Purim party. I don’t think that this sort of Jewish cultural content would be considered as coercion. I think that it would be seen as seasonally appropriate, cultural historical content.

megilla.jpg Haman

I would have gone further. If there had been a Megilla reading at the end of one of the days by ten patent attorneys each reading a chapter, and I can think of ten that read the Megilla who didn’t turn up, they no doubt would have, it would have been an occasion for everyone to boo and hiss Haman. These additional ten practitioners would have invited their friends and colleagues and the more people would have registered (although megilla is traditionally read on Purim, the Talmud speaks about reading up to four days earlier on market days when people gather together). Note, I don’t see any reason why local practitioners who present in any shape or form, shouldn’t have to pay attendance fees. Obviously, judges and senior patent office staff are in a different category.

Let’s assume, however, for arguments sake (and I do enjoy a good argument), that out of concern for alienating the potentially large delegation of Iranian patent attorneys, emphasizing Purim is not appropriate. Here’s the thing. Many patent attorneys don’t work on Purim, and fast the day before, leaving the office early, or working from home. The Purim week is effectively a short week. I suspect that many patent attorneys are also parents. Those with kids in the school system spend das and nights before Purim making elaborate costumes and photograph Junior and Princess in all their glory before sending them off to school. Getting to the Tel Aviv beachfront area for 8:30 to 9:30 am is not really compatible with this. Here again, this cosnideration affects the younger professionals more than those who’ve reached the pinnacle, and typically affects the religious sector more as they tend to have larger families. Jonathan Patentkin, Rabbi Alfred Thee and Susan Lifshitz are veteran patent attorneys with very large families that come to mind. My brother Aharon is a trademark practitioner with a mere six kids., the oldest still in elementary school. I think that if one is not intending on capitalizing on Purim to theme a conference and to allow the dignified to let their hair down a little. maybe Purim week is not the best time to have a conference at all?!

boycott.jpg

Many leading practitioners seem to boycott events sponsored by other firms. They would probably explain themselves as being perpetually too busy with work to make an appearance, but in my opinion, the term boycott is appropriate. It is necessary somehow to make the AIPPI into a practitioner organization so that everyone who is a member of the club sees it as appropriate for them to participate in such events. Frankly I think that everyone present, including the judges and other speakers, could have learned from listening in to other sessions. The attitude of not respecting other experts is not confined to practitioners. I don’t think there was a single IP lecturer who was not speaking or chairing a panel that saw fit to attend to listen to what others have to say. I’d go further. I think that those that did chair sessions or speak came along to do that and then went. Very few sat in on other sessions. This arrogance is sadly typical of the profession.

It is not clear what can be done to alleviate the situation. Some may say that one can bring a horse to water but can’t force it to drink. To some extent this is true. Nevertheless, I suspect that the way the event was run, it may have looked like a Reinhold Cohn production to members of other firms, rather than a profession wide conference. If we can find a way to make such events less branded by the main organizers and sponsors and can also make such events more fun, this may significantly impact participation levels.

One way to increase participation is to have as many people as possible doing something and to make them think it is their event put on by their professional organization with their help. This requires limiting the hands on involvement so that no individual is found moderating or talking at more than one event.

In addition, I think that instead of three people doing all the work and having a committee with important people on it to show that the event is endorsed by important people, the committee could usefully have included a range of ages and levels of experiences, and maybe a different sociopolitical-geograhical-religious persuasions. The idea behind this is that then committee members could target individual potential attendees and invite them individually by phone.

With such a clearly defined demographic, one can send everyone registered to practice at the IPO, all trademark and copyright attorneys, IP academics and others individualized invitations rather than simply informing that the event is taking place.

pyramid

Let us suppose that 20 IP practitioners and academics in different firms, universities and industry segments were each approached and asked to host a table at the gala dinner, and in addition to a fancy dress competition, there would be some fun events played between the different tables, could a medium size firm or a university department with an IP course have allowed themselves not to fill a table? If a sole-practitioner or an in-house IP manager had received four or five phone calls from friends, subcontractors and former mentors inviting him to join their tables, would he or she have felt that this is a big event that would be fun and should not be missed? I think people would come with their partners and colleagues and would come earlier and attend lectures. I suspect their spouses and girl/boy friends would come for the dinner.

Instead of a committee of important people, there would, thereby, be a committee that makes practitioners of all ranks feel important. This is a subtle difference that I think it desirable in a trade organization. I am shifting the focus from having an event to show how important the speakers and organizers are, to how important the organizers consider the potential participants and their enjoyment to be. It is a radical shift.

Do Gooders

The final session saw everyone posing with glasses of wine and listening to a discussion on whether IP could make the world a better place. Could it fight diseases? tackle inequality? prevent global warning? As we were leaving, a friend of mine commented that he didn’t understand what that session was all about.

I note that in addition to the festive meal and the reading, Purim is celebrated by gifts of food to friends and charity to the poor. To provide a buffet selection to participants at each lunch, and a choice of breakfast options and coffee break foods, the hotel provided twice as much food as was eaten. If this was properly refrigerated, this could have been harvested by LEKET Israel and distributed to soup kitchens an charities. Without anyone dipping his hand into his pocket, hundreds of people could have had a free lunch.

Israeli patent attorneys include one that is very active in feeding the poor and employing the unemployable on his farm. In the field of education, there is one who has set up an alternative school, largely funded it himself for some years, and is highly involved. I suspect that the Shin Horowitz chair in IP is also a philanthropic gesture. Undoubtedly there are other charitable initiatives and organizations that other members of the profession are involved with. With a little forethought, donations of participation in training courses and seminars, patent searches, patent drawings and other peripheral services could have been solicited and auctioned for a worthy cause. In other words, vague pontificating could have been replaced by action and an example could have been set.


Subsidizing Israeli Colleges of Further Education to File Patents in Israel

January 11, 2016

college discounts college discount 2

In a new regulation that came into effect at the beginning of the year, colleges of higher education that are recognized by the Committee that recognizes Israeli institutions granting degrees are entitled to a discounted filing fee.

Whereas regular Israeli applicants and foreign applicants, including universities and colleges have to pay 2017 Shekels, the Israeli colleges are entitled to a 40% discount.

For the past year or so, individual Israeli inventors and  companies with minimal income are entitled to such discounts, and I note that in the US there are different fees for micro-entities, small entities and large companies excluding colleges, so Israel is not alone in this. Nevertheless, I fail to see justification for favouring Israeli colleges of education.

The general justification for the patent system is that a limited monopoly is provided in return to teaching something new. College academics publish papers anyway.  That as may be, if such colleges have tech transfer companies and file patent applications in order to license them or spin off a start-up company in their incubator, why shouldn’t they be treated like any other commercial institution?

There doesn’t seem to be a need to provide incentives to colleges to file patent applications as the Israel universities are among the most prolific Israeli applicants anyway, with the tech transfer companies of the Weizmann Institute, Hebrew University and Ben Gurion University all appearing in the list of the top ten most prolific local filers for 2014, and the Technion tech transfer and Yeda (Weizmann tech transfer) appearing in the list of the top ten most prolific local patentees of 2014.

I am wondering whether a discount in filing fees per application of 807 Shekels or just over $200 provides any incentive to the tech transfers to file patent applications? Is there any national agenda that provides a logic for encouraging them to file applications in Israel? If there is some justification for a policy of encouraging Israel universities to file patents, why not ear-mark some government funding for this purpose instead of blatantly discriminating against foreign universities – not that a $200 will likely impact their patenting strategy either.

I generally advise clients to first file in Israel. There are some attorneys that advise first filing a US provisional application. Does a $200 discount affect the advice one would provide to a college or university? I am not convinced.