Adding Evidence After Filing Statement of Case in Patent Opposition Proceeding

March 22, 2018

Plasto Vak ltd (1990) ltd filed Israel Patent No. 220639 titled “Disposable One Piece Container with a Removable Tear Strip Configured for Separation of the Lid and as a Tampering Alert.” On allowance, Vacotec Packaging ltd filed an Opposition.

lateBoth sides filed their statement of case, and then, at the evidence stage, Vacotec applied to reference two additional pieces of prior art. The Opposer justified the need to add these citations by arguing that the Applicant had taken an unexpected position in their Statement of Case and had post-dated the filing date due to amendments during the prosecution.  This resulted in them doing a further search and discovering the two additional references.

The Applicant , Plasto-Vak ltd denies that there was a change between the position they took during the prosecution and that taken during the Opposition in how the claimed invention overcomes the prior art. They further deny that they agreed to the application being post-dated due to significant amendments and argue that it is too late for Vacotec to file amend their Statement of Case.  They noted that they had submitted their statement of case 5 months earlier, and this request by Vacotec was tardy. Finally, Plasto-Vak ltd denies that the new citations are relevant enough to challenge the patentability of the claimed invention.

The invention in question is a disposable one-piece container. It is claimed as follows:

A disposable one-piece container [100] comprising first and second opposing sections [110 and 120], respectively, interconnected by a folding joint [130], said first and second sections [110 and 120] are separable by pulling said second sections [110 and 120] in opposite directions; wherein said folding joint [130] comprises an axis-segment [230] formed by a folding-line [210] adjacent to the second section [120] of said container [100] and a frangible folding-line [220] adjacent to first section [110] of said container [100]; said axis-segment [230] configured as a rotation axis between said two opposing sections [110,120] enabling the closure of said container [100]; further wherein said container [100] comprises a hold-tab [150] located at the first section [110] adjacently to frangible folding-line [220] and a hold-tab [160] located at said axis-segment [230] adjacently to frangible folding-line [220] and spaced apart from said second section [120]; said hold-tabs [150 and 160] are perpendicular to each other and grippable by a user for pulling in opposite directions.

The Application was submitted on 25 june 2012 and the examination was expedited. It published for opposition purposes on 30 November 2016 and the opposition was filed on 27 February 2017.

Discussion

The Applicant is correct that in general in opposition proceedings, the Opposer cannot rely on additional citations beyond those brought in the statement of case. Consequently, submission of additional references requires correcting the statement of case. See Appeal 47387-01-11 Bromium Compounds vs. Alvemarle Corporation USA 8 August 2011 and the IL 155919 Teva vs. AstraZeneca opposition from 5 December 2011.

Amendments to the statement-of-case are allowed where they help focus the discussion on points of disagreement between the parties, where there is no justification to prohibit the correction. See Opposition to IL 187923 Pimi Aggro Cleantech ltd vs Xena international 19 May 2013:

This forum has the authority to allow corrections to the Statement of Case in instances where the amendment focuses on the issues in question and where there are no reasons not to allow the amendment. Such reasons for refusing to allow the amendment include inequitable behaviour, denying the opposing party their rights in a way that may not be compensated for with monetary award in a costs ruling for the interim action, and tardiness in requesting the amendment (see interim request to amend the statement of case in cancellation proceedings against IL 154398 in Logo Engineering Development vs. State of Israel, Ministry of Agriculture, Volcani Institute 29 April 2004. Furthermore, exercising the authority to allow such amendments depends on the stage of the proceedings reached, since patent oppositions delay and prevent the Applicant from receiving the patent.

In this instance, there does not seem to be any real reason not to allow the amendment to the statement of case and the addition of these references since the Applicant can respond to the amended statement of case. The Opposer claims that their evidence is ready and can be submitted within a week so that no real delay will result from allowing the additional material to be submitted.

Two issues that the Applicant raises deserve responding to:

  1. The delay in filing the request
  2. The relevance of the new citations

It is preferable to conduct a proper search before filing the Statement of Case, and not have to subsequently amend it at the evidence stage. The Opposer claims that the search was based on the Applicant’s position as stated in the meeting with the Examiner and this resulted in the need to conduct a further search after receiving the Applicant’s statement of case.

In the prosecution, the Applicant claimed that the main difference between the applied for invention and the prior art in that the tabs are very close to the fold line.

“In response to the office action issued on 17.02.16, the applicant respectfully submits the following:

In item 1a of the office action, the examiner states that D1 discloses the present invention. The applicant interprets that the present invention is rejected as not novel. Meanwhile, the tabs functionally directed to separating upper and lower parts of the container are located in the positions absolutely different in comparison with the prior art document. Specifically, they are adjacent to the fragile folding line while, in D1, are located distantly. This limitation is the main discriminating constructive feature regardless of a material of the container.

…”

The Opposer submits that the Applicant is now claiming that there are additional differences that claim patentability due to other features as raised in the meeting.

To show that a claimed invention is anticipated, one has to find a piece of prior art that relates to all the features of claimed.  The claims are interpreted in light of the specification, and one cannot import features not described in the specification:

The correct interpretation is that terms in the claims should be interpreted in light of the specification to give them the meaning intended by the inventor. This can be narrow or broad, so long as the interpretation is anchored in the specification and is clear to persons of the art.

However one should differentiate between the ways that one can widen and clarify the monopoly and how one understands the invention. One can refer to the specification to understand the monopoly but that not claimed is not part of the monopoly. See Appeal  345/87 Hughes Aircraft Co. vs state of Israel et al. p.d. 44(4) 45, 70.

So even where the Applicant stresses one or other element in the claims or in the rest of the application during the examination or in the statement of claims, since the claims themselves were not amended in the opposition, the Opposer knew what the claimed elements to be searched were.  (this is not to be understood as license to ignore that claimed during the patent examination).

Nevertheless, the resulting delay is not serious enough to warrant forbidding the correction of the statement of case and the addition of the two new references and allowing it will not drag out the opposition. To the extent that the Opposer could have found these new citations 10 months ago, the damage to the Applicant by the resulting tardiness may be compensated for by awarding costs to the Applicant.

As to the alleged lack of relevancy of the new citations, there is no clear a priori basis to exclude the possibility that these publications are relevant to the patentability. The Applicant submitted a 23 paragraph statement to try to show why these citations are not relevant and so it seems reasonable to accept the possibility that the citations are relevant and to relate to them substantively in the Opposition proceedings instead of to prevent their being submitted.

In light of the above, Ms Jacqueline Bracha allows the statement of case to be amended to relate to the two additional citations as follows:

  1. The corrected statement of case and additional evidence must be filed within 7 days
  2. The applicant will file their statement of case and evidence within the following three months as per section 59(b) of the Regulations
  3. The Opposer will pay 5000 Shekels including VAT costs to the Applicant

 Re IL 220639 to Plasto Vak ltd (1990) ltd; Interim ruling by Ms Bracha on addition of Evidence not referenced in Statement of Case, 21 February 2018


Unipharm without legal representation, wins Interim Proceeding Against Novartis

February 22, 2018

galvusIsrael  Patent Application No. 176831 to Novartis is titled “COMPRESSED PHARMACEUTICAL TABLETS OR DIRECT COMPRESSION PHARMACEUTICAL TABLETS COMPRISING DPP-IV INHIBITOR CONTAINING PARTICLES AND PROCESSES FOR THEIR PREPARATION ” the patent application is a national phase of PCT/EP/2005/000400. It relates to a pharmaceutical used in the treatment for diabetes known as Vildagliptin (previously LAF237, trade names Galvus, Zomelis,) which is an oral anti-hyperglycemic agent (anti-diabetic drug) of the dipeptidyl peptidase-4 (DPP-4) inhibitor class of drugs. Vildagliptin inhibits the inactivation of GLP-1[2][3] and GIP[3] by DPP-4, allowing GLP-1 and GIP to potentiate the secretion of insulin in the beta cells and suppress glucagon release by the alpha cells of the islets of Langerhans in the pancreas.

Unipharm has opposed the patent issuing and, in an intermediate proceeding, Unipharm (not represented) submitted a disclosure request for:

  1. The specific testing referred to Appendix E of a the Applicant’s expert witness.
  2. All other tests relating to all the formulations that were performed where the particle size distribution was examined.

Unipharm

Alternatively, Unipharm requests that the part of the evidence that relates to the evidence submitted in the European Opposition proceeding from Dr Davis’ statement, including Appendix E, be struck.

The patent relates to tablets that are made by direct compaction and which include DPP-IV, (s)-1-[(3-hydroxy-1-adamantyl)amino]acetyl-2-cyanopyrrolidin (Vildagliptin) in free radical form or as a salt, wherein at least 80% of the particles compressed into the tablet are in size range of 10 microns to 250 microns.

novartis

In their Statement of Case, Novartis explains that use of direct compression was not obvious to persons of the art wishing to produce vildagliptin formulations, and the distribution and size of the particles affects the character of the tablet in a manner that determines the efficacy of the formulation. The chosen distribution enables tablets to be produced by direct compaction which have high quality, acceptable stability and good physical properties.

With respect to this, Novartis’ expert witness, Dr Davis, explains in his expert opinion as follows:

“There is no prior art suggesting that tablets of vildagliptin can be made using direct compression with this size range or any size range. This particle size range and percentage of the active agent is not disclosed in the prior art. It should be noted that the particle size distribution is important to achieving good physical properties in the tablet (e.g. good hardness). Evidence filed in a technical annex for the corresponding European Patent Application No.15199440.7 (available on-line from the EPO at https://register.epo.org/application?documentId=EZQR8ZQ06757DSU&number=EP15199440&lng=en&npl=false),  comparing 88% PSD of 10-250 micron (within the claim) versus 79% PSD of 10-250 micron (outside the claim) shows that the use of a particle size distribution as claimed is important in providing directly compressed tablets with good hardness (Appendix E).”

The Expert witness related to the technical appendixes that were submitted by the Applicant to the European Patent Office which compares tablets that fall within the ambit of claim 1 to those that do not, and this is the basis of the discovery request that Unipharm submitted.

Claims of the Parties

disclosureUnipharm’s opposition to this evidence is that Professor Davis relied on test results from tests that he himself did not conduct, and they express wonderment that Novartis did not produce the drug developers to be cross-examined. In response, the Applicants claim that the disclosure process should be allowed in cases where it is proven that the documents in question are relative to the proceeding in general and to the point of contention between the parties, and in this instance the Opposer did not justify his request for disclosure of documents and did not explain how the disclosure would help clarify the question under debate.

grain size

Novartis further allege that the request for disclosure is wide and general, in that it relates to all testing and formulations made, where particle size was examined. The Applicant further asserts that Dr Davis referred to Appendix E merely to show that it was published and not as evidence that the data therein is true (!?).

As to Unipharm’s alternative request, Novartis claims that the Opposer did not base this allegation, and that we are referring to an expert opinion based on data provided to him and his relying on the publication is equivalent to any expert relying on a professional publication such as a paper in a scientific journal or a patent application in a relevant field.

file-wrapperIn response, Unipharm claims that the Applicant’s expert, Professor Davis, did not merely testify that the document was included in the file wrapper of the European Patent Application, but also reached conclusions in his expert opinion that were based thereon. As far as anything connected to the scope of the disclosure, Unipharm focuses their request and asks to receive the documents relating to the experimentation with the particle distributions and efficacy of formulations made with the specific distributions.

Unipharm claims that the documents will reveal that the tests conducted, if indeed conducted, do not provide sufficient instruction to persons of the art to produce the invention successfully without additional experimentation and thus the patent application should be rejected as not enabled under Section 12 of the Israel Patent Law 1967.

Discussion and Ruling

legal fishing expedition

There is no doubt that the Commissioner of Patents can request disclosure and access to documents in opposition proceedings. The disclosure is efficient in that it provides documents to the Patent Office that are not covered by Section 18 of the Law (Duty of Disclosure) and which can help clarify if an application is patent worthy. However, disclosure is performed in a manner to prevent the Applicant going on an illegal fishing expedition in the Applicant’s filing cabinets.

The considerations to be weighed up prior to giving a disclosure order are detailed in Opposition to 60312 Biotechnology General Corp vs. Genentech Inc and in Opposition to 143977 AstraZeneca AB vs. Unipharm ltd, and these are the stage of the opposition reached; the amount of documents and their content; the weight of the claim that the Applicants are attempting to prove with the documents asked disclosure of, their evidential weight, the possibility of the Applicant to obtain the documents themselves, and the burden it will cause the opposing party.

In these rulings it was also determined that disclosure could damage the property rights of the opposing party by forcing revelation of trade-secrets. However, the possibility of such damage being caused does not remove the authority of the Patent Office to demand such a disclosure, but obliges consideration of the legitimate property rights of the party when applying that authority.

In the opinion of Commissioner Alon Ofir, Novartis is correct that the experimental results will have no effect on the average person of the art’s ability to implement the invention. The answer to this question is found in what is revealed and not in what is not revealed in the patent application.

Nevertheless, Unipharm is correct with regard to everything related to the tests described in Appendix E, since the Applicant himself relied upon this in his statement. In this regard the Commissioner does not accept that this evidence can be considered as external evidence that their Expert Witness relied on. The document was prepared by Novartis themselves, with data they control, and their expert witness relied on it in his Opinion.

tablet-compression-machine

The particle size distribution is claimed by Novartis themselves as being a central element of their invention, and the claims of the Application itself limits the requested patent to one wherein 80% of the particles are in the 10 micron to 250 micron range. The Applicants themselves state in their Statement of Case, that the choice of particle size and distribution is what enables the fabrication of tablets of an acceptable quality by direct compression. Their Expert Witness finds support for this claim in Appendix E which compares tablets having this particle distribution with tablets that do not.

In these circumstances, one should consider the documents as relating to the central question being debated by the parties. Thus the documents relating to Appendix E are ruled relevant and Novartis are required to provide not just those relied upon but other documents summarizing experiments done with the intention of producing Appendix E, even if not included therein.

Novartis is given 30 days to produce an Affidavit of Disclosure with the relevant documents describing test results obtained in the experimentation leading to Appendix E, whether or not included in the Appendix, but relating to the hardness of tablets made from different particle distribution.

As an after-note, the Opposer is chastised for using language that does not show respect for the proceedings which was inappropriate.

No costs are awarded.

Ruling on Interim Proceeding regarding disclosure, by Commissioner Ofir Alon, 3 January 2018.

COMMENT

trawlingIn court proceedings in the United States there is wide discovery and the parties effectively go on fishing expeditions with trawlers and haul up everything and then have to wade through the bycatch.  This is not the case in Israel. One can ask for specific documents, but have to justify the request. Thus I have used the term disclosure and not discovery.

self representation

In this instance, Unipharm is not-represented, or to be more accurate Dr Zebulun Tomer is representing himself. No doubt if he runs into trouble he will call on his attorney Adi Levit to represent them. It is unlikely that the inappropriate language lost Unipharm a costs award as, since they have not used legal counsel, they are not entitled to costs anyway.

We strongly discourage industrialists to represent themselves in Opposition proceedings. The Tomers, however, have so much experience of killing pharma patent applications that there are very few lawyers that have handled so many cases.


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 »


Dummy Targets and Decoys

June 29, 2017

This ruling relates to claim construction and permissible amendments.

IAIIsrael Aircraft Industries submitted Israel Patent Application Number 190197 titled “Method for Performing Exo-Atmospheric Missile’s Interception Trial”  back in March 2008.  The application was first filed in Israel and does not claim priority from foreign applications. On allowance, the application published for opposition purposes and Rafael Advanced Military Systems Ltd filed an opposition.

The independent Claims  1 and 15 of the application are as follows:

“1. A method for facilitating exo-atmospheric ground to ground (GTG) missile’s interception trial, comprising:
Launching a carrier accommodating at least one inflatable dummy target, said carrier being configured to release an inflatable dummy target therefrom; said dummy target or portion thereof is configured to be inflated and has characteristics that resemble a GTG missile characteristics; said dummy target is configured to re-route its flight trajectory during its release from the carrier for at least (i) facilitate sensing of interception during the END GAME, (ii) assuring that the carrier being substantially out of the field of view of the interceptor during the END-GAME, or assuring that the carrier being substantially in the field of view of the interceptor during the END-GAME at the pre-defined location relative to the dummy target;
Launching an interceptor for exo-atmospheric interception of the dummy target; and
Receiving communication of data sensed during the interception process.”

“15. A method for simplifying exo-atmospheric ground-to-ground (GTG) missile’s interception trial, comprising:
Providing at least one inflatable dummy target that is manufacturable in considerable simpler manufacturing process than a GTG missile, and capable of manifesting characteristics that resemble characteristics of the GTG missile and wherein use of said inflatable dummy target prevents near and far safety problems;
Providing a common carrier missile capable of accommodating at least one dummy target irrespective of the characteristics thereof;
Whereby said common carrier missile is capable of being launched and being configured to release the at least one inflatable dummy target at selected exo-atmospheric location, for testing the ability of an interceptor missile to intercept said dummy target at exo-atmospheric interception point, thereby testing the interceptor’s operational feasibility to destroy the GTG missile.”

Rafael based their Opposition on the following publications:

  1. Development of Coherent Laser Radar at Lincoln Laboratory, 2 Nov 2000
  2. An Internet page from The Federation of American Scientists (FAS) 22 Nov 2002
  3. Explanation of why the sensor in the exo-atmospheric kill vehicle (EKV) Cannot reliably discriminate decoys from warheads from 2000
  4. US 3,290,681 from 6 December 1966
  5. US 3,411,778 from 19 November 1968
  6. US 3,212,730 from 19 October 1965
  7. US 2002/0149996 from 17 October 2002

rafael.pngRafael considered that the claimed invention lacked novelty contrary to Section 4, and lacked  inventive step contrary to Section 5. Furthermore, the specification was allegedly not enabling contrary to Section 12a of the Law. Rafael further alleged that a major amendment during the Examination process required that the application be post-dated and thus the PCT application based on the Israel application anticipated the claims as issued. Read the rest of this entry »


Patent Application for Poultry Processing System Refused By Examiner is allowed by Deputy Commissioner

June 9, 2017

One of the nice things about the Israel patent system is that the Applicant has the right to appeal Examiner’s claim rejections to the Commissioner. The process is rather smoother, cheaper and faster than Appeals in Europe and the US.

Israel Patent Application Number IL 190482 to Ecolab Inc titled “SYSTEM AND METHOD FOR ON-SITE RECLAMATION, RECONDITIONING AND REAPPLICATION OF POULTRY PROCESSING WATER” is the national stage entry of a PCT application US/2006/038333 submitted in October 2006.

poultry processingThe invention relates to recycling water used for processing poultry and reusing for the same purpose. The first office action of 14 January 2013 found the Application non-patentable due to it lacking an inventive step over US 2005/0016934. The Applicant requested allowance under section 17c, based on the corresponding Australian issued patent no. AU 2006303885 that had issued in 2011. However the Examiner considered that the Applicant should deal substantively with the obviousness objection before the patent could be allowed.

On 8 December 2016, after five rounds of claim amendments, the Examiner finally refused the application under regulation 45 of the Patent Regulations 1968.

In the meantime, the corresponding Canadian patent, CA 2618436 issued with virtually identical claims. However the US patent application was refused, as was an Appeal to the PTAB, due to US 6,182,833 to Zittel, US 6,802,984 to Perkins and US 5,470,472 to Baird, none of which were cited in Israel.

The main claim is as follows:

“1. A treatment system for on-site reclamation, reconditioning, and re-use of poultry processing water, wherein said treatment system is connectable to a washing system, said treatment system comprising:
(a) an inlet line connected to a first receptacle within the washing system forcollecting said processing water leaving said washing system;
(b) a rotary filter, said filter retains solids greater than 0.001 to 0.010 inches, wherein the inlet line is connected to the rotary filter for filtering debris from the processing water collected in said first receptacle;
(c) a channel for removing said debris filtered from said rotary filter;
(d) a dispenser comprising equipment for preparing an antimicrobial solution, and a plurality of spray nozzles positioned proximate to said filter;
(e) a second receptacle for collecting water and antimicrobial solution from the rotary filter and from the dispenser, said second receptacle having a fluid capacity of 100 to 2000 gallons;
(f) piping for circulating said processing water through said washing system and said treatment system and for returning said processing water to said washing system; and,(g) a plurality of air operated diaphragm pumps for circulating the processing water through said piping;
wherein said dispenser is configured for dispensing antimicrobial solution and water onto said filter, and wherein the treatment system comprises only one disinfecting mechanism consisting of the dispenser as a source of antimicrobial solution and the rotary filter and second receptacle as receptacles of antimicrobial solution.”

The Examiner’s decision to reject the Application was based on the following reasons:

  • The application lacks inventive step over US 2005/0016934;
  • The Applicant failed to explain why the invention was an improvement over the prior art, especially US 2005/0016934, and did not provide data showing that it was more efficient. Consequently, the Examiner considered that adding the anti-microbial solution during or after filtering were equivalent and the differences were well understood to persons of the art.
  • Since over US 2005/0016934 shows a rotating filter with sprinklers, there is no technical problem to add ozone to the filter in addition to or instead of the oxidation described in over US 2005/0016934.

The Applicant responded by offering to add a further element to claim 1, thereby narrowing the scope of the patent and providing an inventive step.

The additional narrowing feature is as follows:

“(d) a dispenser comprising equipment for preparing an antimicrobial solution, and a plurality of spray nozzles positioned proximate to said filter, said dispenser spray nozzles configured for dispensing antimicrobial solution continuously onto the filter for 10-60 seconds every 5 minutes to 5 hours; ”

The Applicant similarly applied to amend independent claim 9 as follows:

“(e) dispensing an antimicrobial solution and water onto said filtering apparatus by means of dispenser comprising a plurality of spray nozzles positioned proximate to said rotary filter by spraying water onto said filtering apparatus for between 10 to 60 seconds every 5 minutes to 5 hours at a force of between 0.6 to 6 pounds-force when measured from 12 inches away from said filtering apparatus and constantly spraying said water at a force of between 0.1 to 0.5 pounds-force when measured from 12 inches away from said filtering apparatus, thereby removing the retained solids from said filter thus forming a waste stream and removing bacteria from reclaimed water;”

The Deputy Commissioner Ms Jacqueline Bracha considered this sixth claim amendment in a hearing on 24 April 2017.

Discussion

The claimed invention was considered novel, so the Examiner concentrated on inventive step over US 2005/0016934 as required by Section 5 of the Law.

Section 5 states:

Inventive Step is an improvement that is not considered self-evident to persons of the art based on publications preceding the Application date as per section 4.

Different approaches for determining inventive step are given in the ruling concerning IL 219732 to Celgene Corporation. According to both the US and the British approaches, one has to identify the prior art available to persons of the art, to identify the differences and to determine whether there is an inventive step that wasn’t known to persons of the art at the relevant date.

In 345/87  Hughes Aircraft Company vs. State f Israel p.d. 44(4) 45 (1990) paragraph 49 it was established that the inventive step does not need to be big.

The prior art relied upon by the Examiner is US 2005/0016934 which describes a system for recycling water after processing poultry by treating the used water to remove solids, fats, oils, and pathogens for reuse of the water in further poultry treatment.

The common elements are: two receptacles for collecting the water, one of which is for collecting the water after use in the washing system; sprinklers, filters for filtering waste from the water after use; a pipe for removing waste, a pump for circulating the water through the system, and a diaphragm pump operating on compressed air to cause the water flow.

There are, however, differences between the cited art and the claimed invention. The filter in the claimed invention rotates and is situated after the first receptacle, whereas that in the system described in US 2005/0016934 is upstream of the first receptacle so that the water is filtered before the anti-microbial solution is added.

The addition of the anti-microbial solution in the claimed invention is by sprinkling onto the rotating filter at an earlier stage that in the cited art wherein the anti-microbial solution is added after two filtration stages. Furthermore, in the system of the application, the anti-microbial solution is added in one stage, in the filter, so there is one disinfectant stage that occurs concurrently with the filtering. In contradistinction, in the cited art, there are two disinfectant stages, where ozone is first used, and then chlorine is added (see [0027] and [0030]. Introducing ozone into the system requires a second stage wherein the ozone acts on water in the receptacle to kill microorganisms in the water. The addition of chlorine is actually optional and it is introduced at different stages not detailed in US 2005/0016934.

The claimed invention includes a dividing system with sprinklers that includes equipment for preparing the antimicrobial solution and sprinklers for its introduction into the filters such that water without the antimicrobial material is continuously sprinkled whereas the water with the antimicrobial material is intermittently added as per the claims. In US 2005/0016934 the water flows continuously.

The Applicant claims that the differences between the claimed invention and the prior art are sufficient to provide an inventive step, since the early addition of the antimicrobial solution enables it to act continuously without needing to wait. Furthermore, in the claimed invention the filtering and sterilizing are combined, whereas in the cited art, the washing of the filter is only intended to remove waste.

The Applicant argued that the long period in which the antimicrobial solution is in the system allows a weaker antimicrobial system than that required in the cited art.

RULING

The Deputy Commissioner considers that the differences between the cited art and the claimed invention require persons of the art to apply an inventive step. At least the Examiner failed to cite similar features found in related systems that are required to substantiate the allegation of lack of inventive step.

The Deputy Commissioner disagrees with one allegation of the Examiner; that the Applicant failed to explain the advantages of the claimed invention over the prior art. The Deputy Commissioner does not consider that the Applicant has to provide external evidence that the invention is superior to the prior art. The advantageous feature(s) have to appear in the specification at the time of filing so that the Applicant does not invent during Examination. Furthermore, a different system that is not necessarily superior, but which operates in a different manner may be patentable, if the differences are not obvious to persons of the art.

In light of the above, IL 190482 is allowed for publication for third-party opposition.

COMMENT

The Deputy Commissioner notes that the Israel Law refers to an inventive step and then explains that a non-obvious difference that is not necessarily advantageous is all that is required.

To my mind, the US law requires the claimed invention to be non-obvious, whereas the UK and EP approach requires an inventive step. The wherein clause in the US points out a non-obvious feature, and the characterized by clause in Europe points to an inventive step. The two requirements are not the same.

That as may be, the US board of appeal rejected the invention in light of specific art. I think that for purposes of efficiency, the Deputy Commissioner should have referred the application back to the Examiner to consider that art in light with Israel law since one assumes that oppositions or cancellation proceedings will raise the issues found persuasive in the US. Then again, perhaps it is better for the Commissioner or a judge to consider such issues.


New Directives For Examining Israel Patent Applications

May 17, 2017
israel patent officeOn March 23, 2017, the Israeli Patent Office issued two new Directives; No. 034/2016 and 035/2016.  These apply to all patent applications having a first substantive Office Action that issued after March 27, 2017.

Unity of Invention
unityPatent applications may describe more than one invention but the claims should relate to one invention only. In applications where more than one invention is claimed, instead of issuing a lack of unity objection and letting applicant address the issue and elect a claim set to be examined, the Examiner will generally examine the first claimed invention appearing in the claims, but has the discretion to allow the Applicant to elect the invention to be examined. One cannot respond to an office action by replacing the claims to an examined invention by amending the claims to claim what the Examiner considers to be a separate invention. The applicant must file a divisional application to have non-elected inventions examined.
Use Claims
swiss claimsSwiss-type claims  of the form “Use of X in the preparation of a medication for the treatment of Z” are no longer acceptable unless the process for the preparation of the medicament is inventive per se). EPC 2000-style claims (X for use in/as Y) are, however, acceptable.
Extensions for late filing of responses
lateThe number of extensions available for each substantive Office Action during patent examination has been reduced to four months, and the total extensions for the entire examination should not exceed 12 months. This is 3 months less than the 15 months of Extensions that was formerly available. However, this period is only once substantive examination commences and does not include extensions of up to 6 months for responding to the Notice Prior to Examination.

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 »