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 »


Is claim construction a matter of Law or is it related to the Art claimed?

January 6, 2017

Elad Barkan owns Israel Patent No. 133671 titled “CRYPTANALYSIS METHOD AND SYSTEM” and Rontal Engineering Applications 2001 (LTD) is attempting to have this patent canceled.

There are corresponding US patents US9038192 (B2)  and  US8295477 (B2), however there are some claim differences.

One question that arose in the cancellation proceedings is how the claimed invention differs from that of the corresponding US patent.

Rontal Engineering’s representatives engaged veteran Israel Patent Attorney Sanford T Colb to explain this, which he did in an Affidavit. Barkan’s attorneys requested permission to submit an expert opinion of their own and this was duly allowed.

Elad Barkan wrote the expert opinion himself, challenging Colb’s competence in cryptoanalysis. Rontal Engineering’s lawyers then submitted to have Barkan’s affidavit thrown out as it raised new issues, and, according to them, despite his competence regarding the technical subject matter, the correct reading of claims is a matter of law that was outside his competence. They also noted that as a party to the proceedings he could hardly be considered an impartial expert witness.

After referring to different sections of the affidavit that showed that Barkan was indeed ignorant of claim construction, the Deputy Commissioner Ms Bracha had his Affidavit struck from the record, and announced that costs for this skirmish would be taken into account at the end of the main proceedings.

 

COMMENT

In Israel we do not have specialist IP courts and any District Judge or Supreme Court judge may be called upon to rule on IP cases. Sometimes, the judge has no scientific background and has never studied IP law and occasionally the decisions are plane wrong. See here  for an example of a very wrong decision. The Commissioner and Deputy Commissioner are specialist IP judges. They have a team of Examiners that they can call on. they should therefore be able to construe the scope of protection of claims granted in Israel without the help of a practitioner in private practice, however experienced and competent.

I think that Luthi et al who represented Barkan should have understood or at least clarified what Ms Bracha wanted in a counter-opinion, and should know that clients are not impartial and generally make lousy witnesses.


Amending Consisting to Comprising in Claims of An Issued Patent

November 1, 2016

spelling-is-hardTypographical and scribal errors may be corrected in already issued Israeli patents provided that the commissioner is convinced that the error is a genuine one and that the patentee is not using an alleged error to widen the coverage of the claims.

In the case of Israel Patent No. 194774 to Lantmann As-Faktor AB [no relation- MF], titled “ANTISECRETORY PROTEIN FOR USE IN THE TREATMENT OF COMPARTMENT SYNDROME”, after the patent issued, an Examiner refused to allow an error to be corrected. The patentee appealed this decision to the Commissioner, under Section 161 of the Israel Patent Law 1967.

wish you were her.jpgThe patentee claimed that a mistake had occurred in claims 1 and 21 as granted. The Examiner agreed that a mistake had indeed occurred but wasn’t prepared to consider the mistake as being a typographical / scribal error that could be corrected.

In general, Section 65 allows scribal errors to be corrected and Section 66 provides various conditions. Section 69 states that:

(a) the patentee is able to request a correction to a scribal error that occurred in the specification, and the Commissioner will allow this provided he is convinced that this is ONLY a correction of a scribal error

(b) the Commissioner is also allowed to initiate the correction of a scribal error found in the specification provided that the patentee agrees.  

erroristsThe allowance of the patent changes the rules regarding amending the specification. Once the patent is allowed there is less flexibility. Whereas section 22 allows applicants to amend anything and everything prior to  allowance under Section 26, The part three amendments of sections 65-69 that are allowable after allowance or grant are far more restrictive. See regulations 101 and 102.

Regulations 95-102 of the Patent Regulations 1968 regulate the post allowance amendments in accordance with Sections 65 and 66, and allow the patentee a hearing in this regard. These regulations do NOT apply to Section 69 and nor do their procedural aspects.

Correcting typographical errors is also related to in section 171 which states:

The Commissioner is allowed, if requested to do so, to correct any typographical errors in the patent register or in any document from the Patent Office.

It is noted that Section 170a grants the Commissioner wide discretion to amend documents if they do not correctly reflect the state of affairs.

(a) Following a request from an interested party, appropriately submitted in accordance with the guidelines, the Commissioner can amend the register or any document filed with or issued by the Patent Office, if he considers that the register or the document does not correctly reflect the facts and where this Law does not provide an alternative method for effecting the correction.

In contradistinction to amendments to register entries and documents that require publishing for public opposition, amending a scribal error does not necessary require its publication. However, with regard to amendments requested by the Commissioner, Section 172 requires the Commissioner to allow any parties that may be adversely affected to state their case.

In addition, Regulation 149 allows requesting the correction of any register entry or document that does not have specific regulations or laws elsewhere. In such cases, the Commissioner has the discretion whether or not to publish the amendment based on the rights of third-parties that may be adversely affected.

Prior to IL 194774 issuing, there were several rounds of interaction between the examiner and the applicant. with respect to the Office Action of 6 October 2014 the Examiner stated that the claims should be amended as follows:

2(a) As per Regulation 20(a)(3) with respect to claims 1 and 20, the phrase ‘which corresponds to’ should be amended to ‘consisting’ which is a well-known and clearly defined term.

2(b) Combining claim 7 with claim 2 does not overcome the problem referred to in section 3(a) of the Office Action from 4 December 2014 and it is therefore repeated: Claim 2 contravenes Regulation 20(a)(3) since it defines two separate dosage regimes rendering the scope of the claim unclear. The two regimes should be divided by the word ‘preferably’ as per Page 19 line 14, or alternatively, you could claim the narrower, preferred regime in a separate dependent claim.

2(c) At this stage I only have a marked-up claim-set (version 4). After correcting these issues, please submit full marked up and clean claim-sets.

3. If all the issues raised are addressed, I can accept the application (PK 27).

In the  response of 4 February 2015 a fifth amended claim-set was submitted showing the amendments. In an accompanying letter the Applicant noted that following the amendments he anticipated allowance, but noted that “in the appended pages claims 1 and 20 were amended such that the word comprising was replaced with consisting and claim 2 was divided into two claims.”

In practice, the Examiner’s requirements in 2(b) were fully met. the 2(a) requirements are the subject of the present decision.

In his letter of 17 May 2015, the Examiner noted that the examination was concluded and the application with claim version 5 was allowed. The Applicant was invited to check the allowed patent to ensure that there were no errors. On 12 July 2015 the Applicant paid the issue fees and requested publication of the allowed patent application without referring to any typographical errors.

The allowance published in the 30 July 2015 journal and in absence of any oppositions, a patent certificate issued.

Subsequently, on 2 December 2015, the patentee claimed that due to an error, claims 1 and 22 were not fully amended and requested that the claim 1 version 5 as follows 1. An antisecretory protein, which corresponds to an amino acid sequence as shown in SEQ ID NO:6, or a homologue, and/or fragment thereof comprisingconsisting of an amino acid sequence as shown in SEQ ID NO:4 and having antisecretory activity, and/or pharmaceutically acceptable salt thereof, for use in the treatment and/or prevention of compartment syndrome.” be amended to “1. An antisecretory protein, which corresponds consisting ofto an amino acid sequence as shown in SEQ ID NO:6, or a homologue, and/or fragment thereof consisting comprising of an amino acid sequence as shown in SEQ ID NO:4 and having antisecretory activity, and/or pharmaceutically acceptable salt thereof, for use in the treatment and/or prevention of compartment syndrome.” A similar amendment to claim 22 was requested. Both versions are supported by the specification and there is no problem of unity of invention.

The patentee submitted a statement by Ms Sigal Dahan a patent attorney of the agent of record (Reinhold Cohn). Ms Dahan affirmed that she was requested to amend the claims in accordance with the Examiner’s request. she claimed that failure to do so was the result of a genuine scribal error and that there was no bad faith.

The Commissioner Asa Kling is prepared to accept Ms Dahan’s statement and that of the Applicant and to accept that there was a genuine mistake made without evidence of bad faith.

However, at this stage, following the issuance of the patent,  the examiner wants to amend the phrase ‘which corresponds to’ to ‘consisting of’ and ‘consisting of’ to ‘comprising’.  This is problematic since the term comprising is understood to be wider that the term consisting.

A requirement that a claim “comprises” certain elements does not mean that other elements may not be present: “comprising” does not mean “only consisting of”.(Terrel on the Law of Patents, 17th ed., pp. 288).

The amendment from ‘which corresponds to’ to consisting of is narrowing and is allowable. However, amending consisting of to comprising is a widening.

On 28 January 2016 the Examiner acknowledged that a mistake had occurred, but did not consider this to be a scribal error:

Although I was convinced from the statement filed that a mistake occurred in version 5 that was allowed, I have to examine this mistake as a ‘scribal error’ and cannot accept the amendment as it is not a ‘mere scribal error’ as required by Section 69 of the Law.

The Examiner did not find that version 5 included a clear and obvious typographical error that could be corrected.

Following the Examiner rejecting the amendment, the patentee appealed to the commissioner against the Examiner’s interpretation of Section 69 and alternatively requested that the Commissioner allow the amendment under Section 170 of the Law.

The Patentee argued that in the circumstances it was appropriate to allow the amendment in these circumstances.

The problem is that in the letter of 28 January 2016 the Examiner told the Applicant that subject to correcting the detailed problems with claims as filed, the application would be allowed, thereby saving an examination round. Both versions 5 and 6 overcome the Examiner’s issues and are allowable.

Creatively, the Patentee noted that the Examination guidelines were applicable to pending applications and not to issued patents. This is clear from the fact that the guidelines don’t relate to Section 69 that regulates amending allowed and issued patents.

In his ruling, the Commissioner noted that there is a difference between amending pending applications under Section 22 and amending issued patents under Part 3 of Chapter 4 of the Law that relates to issued patents. The types of amendments allowable are discussed in the Opposition to amend IL 121004 in Mutli-vision technologies vs. Avner Medar 4 May 2003 which defines scribal errors both objectively and subjectively.

comedy-of-errorsThe fact that an error occurred is not sufficient to classify it as a scribal error that may be amended. To classify the error as a scribal error it should be an error of the type that is self-evident on reading the specification and must be the result of a technicality. As defined in Medar, so long as the error is not self-evident, the evidentiary support that it was an error is required to be stronger. From this it is possible that the Examiner was overly formalistic. Nevertheless, following Medar the test is whether a person of the art reading the specification would note immediately that an error had occurred.

From the Office Action, the correspondence and the affidavit of the patentee it is not clear that the Applicant intended to narrow the scope of the patent and this occurred in error. When the Applicant pointed out the error, the Examiner accepted that it was indeed an error and the patent therefore issued in error. One the patent issued, for a scribal error to be corrected, it is necessary for it to be clearly a scribal error. That means to say that were the patentee not to have pointed out the error and requested rectification, the claims of version 5 could have remained the claims on record. Consequently this is not a ‘mere scribal error’.

However, one cannot ignore the fact that the patent issued by mistake. In the circumstances and with regards to the mistake one cannot conclude that section 3 of Chapter 4 applies. It does not appear appropriate to cancel the allowance since both versions 5 and 6 are acceptable claims. The appropriate legal basis for the amendment is section 170 since the document does not reflect the facts and there is no other way to allow the amendment.

The commissioner therefore allows the amendment of IL 194774 claim version 6 under section 170 subject to publication of the amendment in the forthcoming journal, thereby allowing third-party oppositions.

COMMENT

I agree that the commissioner has the authority to allow this amendment but think that allowing this error is wrong. It is a clear widening of the claimed invention and the agent of record is supposed to be well aware of the significance of the terms corresponding and comprising.

I do not agree with the Commissioner’s interpretation of section 170a, that relates to amendments ‘if he considers that the register or the document does not correctly reflect the facts‘. This should be limited to a case, for example, where despite a later amendment having been filed prior to allowance, the claim-set of the issued patent does not reflect this amendment. It should not be used where the fact is what the Agent of the Applicant meant to do, which is a matter of conjecture, but of what the Agent of the Applicant actually did. Here the Agent may have made a genuine mistake but who says that all mistakes may be fixed? The amended claims are wider than those that issued and the Agent had an opportunity to amend prior to paying the publication fee.

This scribal error is somewhat reminiscent of the alleged office error committed by the same firm in the wet-wipes case. I do not have an invested interest to oppose the amendment. If somebody does, I hope that they do and would like to see this amendment canceled.