Copaxone patents invalidated by the US Patent Trial and Appeal Board (PTAB)

August 27, 2016
copaxone 2

Following an inter-partes review brought by Mylan against two patents protecting Teva Pharmaceutical Industries’ Copaxone, a drug for treating multiple sclerosis, the US Patent Trial and Appeal Board (PTAB) has invalidated all claims of the ‘250 and ‘413 patents for double-dose 40 mg Copaxone (glatiramer acetate injection) multiple sclerosis treatment. However, on 24 August 2016, TEVA announced that it plans to appeal to the US Court of Appeals for the Federal Circuit.

Erez Vigodman, president and CEO of Teva, said: “We remain confident in the strength of our intellectual property surrounding Copaxone.”

“We are prepared to defend the full suite of our intellectual property through the PTAB and US courts regardless of the time required.”

copaxone 3“We believe patients, physicians and payers will continue to value the efficacy, safety and tolerability of Copaxone and that it will remain a proprietary, global market-leading product for the reduction of relapses in RRMS patients.”

Teva have also announced that the PTAB had declined a request for a post-grant review on an additional Copaxone patent.

Copaxone represents 20% of TEVA’s income and the invalidation sent shares plummeting by 3%.


Coexistence Agreement Rejected and Attorney Accused of Conflict of Interest

August 17, 2016

Kennedy Electricity and Assets Ltd filed Israel Trademark Application Number 246560 for “Belissima”.

Belissima

The application was filed on 15 May 2012 in class 8 for “hair straighteners, hair removers and hair curlers, electrical tongs, shavers et al.” and for hair dryers in class 11. The original application was for a somewhat wider range of goods, but this was narrowed in response to an office action on 31 July 2014.

Bellisima ImetecBefore this mark was registered, the Tenacta Group S.p.A. filed Israel Trademark Application Number 251952 for “Belissima Imetec”. The application was filed on 26 July 2012 under International Application Number 1140345 claiming priority from European trademark number 011073319, and was submitted for “Electric and electronic apparatus and instruments for curling, cutting, waving, straightening, styling, trimming hair; electric epilators; electric pulsed light epilators; electric razors; electric and non-electric apparatus for cutting nails; manicure sets, pedicure sets; electric apparatus for removing, softening nails, corns, bunions ; in class 10 for Ultrasound electric apparatus for medical purposes for cleaning the face and reducing wrinkles; electric radio-frequency apparatus for medical purposes for reducing wrinkles and toning the skin; electric apparatus for the care of skin and acne; electric apparatus for medical purposes which vibrates or rotates for the cleaning of the face, body and for massaging the body; electric apparatus for medical purposes for microdermabrasion and electrostimulators for toning the body”; in class 11 for “hair drying apparatus, electric; heated or LED apparatus for reducing blemishes or imperfections on the skin; electric apparatus for drying nail polish or for decorating the nails; steam facial apparatus (saunas)” and in class 21 for “Electric and non-electric apparatus for removing make-up; brushes and sponges for body care; combs”.

On 7 September 2015 the Trademark Department at the Israel Patent Office informed the applicants that in view of their not reaching agreement, a competing marks procedure would ensue under section 29 of the Trademark Ordinance 1972. On 21 September 2015 the parties submitted a joint statement to the effect that they did not consider the marks confusingly similar and would cooperate to prevent confusion and mistakes by the public. On the basis of this agreement the parties requested that the Section 29 objection be removed.

On 22 October 2015, the Examiner refused to retract the competing marks assessment and to allow coexistence, resulting in the case being transferred to the Commissioner for judicial review.

edward scissorhands

On 9 November 2015 the parties submitted their coexistence agreement to the Commissioner of Patents and Trademarks. The parties agreed between themselves that the marks could be registered in parallel. The Tenacta Group undertook to only use the term Belissima in conjunction with either Imetec or Italia to differentiate between the marks. The parties stated that the term Imetec is a trademark that is associated with  the Tenacta Group. Furthermore, the parties undertook to clarify any confusion, should it occur.

In her decision of 18 November 2015, the Deputy Commissioner Ms Jacqueline Bracha rejected the coexistence agreement. In that decision she ruled that:

From the agreement it transpires that not only is there no difference in the goods sold under the two marks, but that the first applicant (Kennedy Electricity and Assets ltd.) would be the distributor of the Tenacta Group’s products.

So the parties were invited to state their claims.

sweeneytoddOn 2 March 2016 the parties submitted a joint notice that the first applicant (Kennedy) will remove all goods in classes 8 and 11 from their application, and the Patent Office was asked to reconsider its ruling in light of this development.

In her ruling of 3 March 2016, Ms Bracha stated:

“After reviewing the details of the goods covered by the two marks it is possible to accept the coexistence agreement on condition that ‘combs’ are removed from the list of goods in class 21 for the 251952 mark and that the 246560 mark be combined with Kennedy’s logo and only used therewith. These conditions are intended to protect the public from confusion since the relevant public and the distribution channels are identical.”

Following this decision, the parties submitted additional notices. On 10 March 2015, the Tenacta group announced that its application was only for the stylized mark shown above that includes the term INTETEC and that its mark was for registration in classes 10 and 21 only, and that Kennedy was not attempting to register its mark for goods in those classes. Consequently there was no reason not to allow coexistence. However, Kennedy claimed in a notice of 13 March 2016 that it was not prepared to limit its application to goods carrying the Kennedy logo together with the stylized Belissima mark since it was not marketing the Belissima brand under the Kennedy logo, and they requested reinstatement of the competing marks procedure.

Following Kennedy’s submission, Ms Bracha gave the parties two months to submit their evidence. Some days later, the Tenacta Group again requested coexistence of the marks. On 18 April 2016 Ms Bracha again requested that the parties submit their evidence. On 19 April 2016, the Tenacta Group restated that the parties had reached agreement and that the marks could coexist. On 20 April 2016 Ms Bracha ordered the Tenacta Group to clarify how their notice fulfilled her request. In the same decision it was clarified that this clarification did not extend the deadline for submission of evidence. On 2 May 2016, the Tenacta Group detailed why coexistence was in order. Read the rest of this entry »


Is Evidence Submitted in Response to Evidence Inadmissible?

August 16, 2016

 

inadmissible evidenceThis ruling relates to an interim skirmish regarding the admissibility or otherwise of certain evidence. Specifically, the Opposer is entitled to the last word consisting of a rebuttal of the evidence presented by the Applicant. At that stage the Opposer is not supposed to raise new issues. The grounds for opposition in the evidence should not exceed those in the statement of case. During the period of Opposition, the allowed but opposed patent is unenforceable. The regulations attempt to referee the opposition proceedings so that it moves forwards at a reasonable pace and there are deadlines for each stage. However, the deadlines have some flexibility…

The timeline

IL 169358 is the National Phase Entry of PCT/JP2003/016724 to Otsuka Pharmaceutical Co. Ltd. On 20 April 2013 the Application was allowed and published for opposition purposes. On 29 July 2013 Teva Pharmaceutical Industries Ltd. opposed the patent, submitting their statement of case on 1 December 2013. The Applicant responded on 26 March 2014 and the parties then submitted their evidence.

On 22 December 2014 the Opposer (TEVA) submitted an Opinion by Professor Paul Harrison. On 29 June 2015, OTSUKA submitted an Opinion by Professor Michael Thase. and one by Professor Abraham Weizmann. A counter-response for the Opposer (TEVA) comprising a second Opinion by Professor Paul Harrison was submitted on 13 December 2015.

After the round of submissions as defined in the Patent Regulations 1968 was over, the mutually acceptable dates of 8-10 November 2016 were set aside for a hearing in consultation with the parties and the various expert witnesses.

On 14 January 2016, Applicant (OTSUKA) filed for deletion of paragraphs 78-84  and 86, and appendices 22-26 of Professor Harrison’s opinion as submitted in the second opinion in the response of 13 December 2015. As an alternative submission, OTSUKA requested permission to respond to the issues raised.

On 15 February 2016, the Opposer (TEVA) submitted their response to the deletion request arguing that it was to be rejected. As an alternative, they requested permission to correct their statement of case to relate to the issues in the evidence in dispute. On 7 March 2016, the Applicant counter-responded to the response.

The case

The Application describes pharmaceutical formulations for treating moodiness. MoodinessParticularly depression. The applications includes 9 examples, of which examples 3 and 9 describe clinical trials on mice with serotonin reabsorption inhibitors and with Aripiprezol to test anti-depression effects.

 

During the Examination of the patent, the Applicant submitted a letter of 6 April 2011 with examples detailing the additional combinations of serotonin reabsorption inhibitors and aripiprezol in order to overcome prior art rejections by the Examiner and to show, as they put it, “…that the combination as presently claimed in the Application, has an excellent therapeutic effect for treating mood disturbances”.

Mouse in wonderlandIn Example 3 of the Application and supplementary experimental evidence, use was made of the so-called Forced Swimming Test (FST). In Example 9, use was made of the so-called Tail Suspension Test (TST).

In Section H of the second opinion submitted in response to the Applicant’s evidence, Professor Harrison responded to Professor Weizmann’s claims that what was allegedly surprisingly found in combining aripipre or dihydro-aripiprezol with serotonin reabsorption inhibitors resulting in an enhanced symbiotic effect was fairly obvious.

The Applicant does not deny that Professor Weizmann said this. They claim that the synergistic effect appeared in the statement of claims and that the Opposer could have related to it as they saw fit in their first evidence filing rather than by way of response.

In response to the synergy claim, Professor Harrison raised three points in his second expert opinion as filed in response:

  1. The claims of the patent application are not restricted to formulations having a synergistic effect and the clinical trials described in the application do not demonstrate any synergetic effect between ariprezol / hydro-aripiprezol and the serotonin reabsorption inhibitors. In this regard, Professor Harrison went on to state his finding that examples 5-8 of the application, which related to the combinations, do not provide evidence to any synergy.
  2. The examples described in the clinical trials do not include any relevant control groups that  can enable deriving the conclusion that there is a synergistic effect. In his second opinion, Professor Harrison refers to the first opinion and explains that there is no evidence that any improvement in patients being treated by the combination can be attributed to a synergetic effect of the combination.
  3. The examples allegedly showing a synergistic effect do not necessarily show this. One cannot determine a synergetic effect from the Tail Suspension Test.

Appendices 22-26 are references that are cited by Professor Harrison to demonstrate and to provide a basis for that claimed in paragraphs 78-86 of his second opinion. From the above, one can regard the challenged evidence as evidence submitted in response to the synergistic effect raised by Professor Weizmann in his submission of evidence.

The Applicant does not see this as evidence submitted in response. In the Statement of Case, paragraph 46 relates to the tests performed in examples 3 and 9 and stresses that there is no evidence of a surprising synergy:

The tests described in the Application relate to the combination of ariprezol / hydro-aripiprezol and serotonin reabsorption inhibitors selected from a specific group of chemicals for treating depression and major depression. There is nothing in these tests that demonstrates, even implicitly that the combination has an advantageous or surprising effect over that previously known which describes combining neurolifts with SRI. Specifically, these tests do not prove an advantage in the claimed combination over any combination of ariprezol with SRI.

Section 46 relates to the combinatory effect or synergy between two materials. The things were stated with respect to the examples described in the Application and not specifically with respect to the additional examples.

In light of the above, Commissioner Kling could not conclude that there is no argument with respect to the synergistic effect itself. Furthermore, since the Applicant himself referred to the examples and a claimed synergetic effect, it seems that this point requires clarification and analysis in the framework of the hearing. Thus one cannot conclude that the issue is moot in light of the exchange of statements of case.

The question remains if reference to the supplementary examples is not by way of response. As the Applicant emphasized, these materials were included in the prosecution file and therefore were presumably before the Opposer when the Statement of Case and the evidence submissions were written.

That said, examination of the Applicant’s statement of case does not testify as to which specific examples were considered, and if they limited themselves to examples specified in the application or if they widened their case to include the examples within the prosecution file that were before the Examiner.

To the extent that the alleged synergy effect relates to the supplementary examples, the Opposer reasoned that the Applicant cannot give these much weight in the framework of their evidence. With respect to the supplementary examples, the Opposer stresses that the results were submitted in the evidence stage only, and reference to these in the statement of case itself was merely in a general manner. The Opposer explains that since it was not clear if the supplementary examples, that are not within the application itself, but were only submitted during the examination, would be referred to in the opposition proceedings, they did not relate to them prior to the Applicant introducing them in Professor Weizmann’s Opinion. Consequently, the Opposer claims that relating to these examples in the evidence stage is essentially by way of response.

The nature of evidence submitted in response is defined in Regulation 62:

The opposer is allowed, within three months from when evidence is submitted on behalf of the Applicant, as per regulation 59(b) or regulation 61, to submit counter-evidence that relates to the facts specifically denied by the Applicant in his evidence or to issues first raised in that evidence.

The criterion relevant to our case is the question of facts first raised in the Applicant’s submission of evidence.

The Opposer cannot grab the rope from both ends. The Opposition is a continuation of and a part of the Examination process. See Civil Appeal Shechter vs. Abmatz ltd, p.d. 44(2) 846 and Appeal 665/84 Sanofi vs. Unipharm p.d. 41(4) 729. The material within the prosecution file is available to the parties. Nevertheless, during the opposition procedure, by virtue of the issues raised during the proceedings, the parties are required to identify the material to be discussed in the hearing. Since even from the Opposer’s perspective, the supplementary examples were available in the file wrapper, one cannot relate to this evidence as facts first brought up in the Applicant’s submission of evidence. Since these are supplementary examples, one cannot consider them as evidence suddenly presented for the first time in the Applicant’s submission of evidence.

Nevertheless, in light of the discussion of the synergistic effect in examples 3 and 9, and in view of the not insignificant reference to the supplementary examples by Professor Weizmann in his expert opinion, one cannot consider the supplementary examples irrelevant. The synergetic effect as discussed by Professor Harrison is not a widening of the statement of case.

In several instances the case-law has concluded that the rules of submitting evidence before the Commissioner of Patents are more flexible than the rules governing the submission of evidence to the court. See for examples Appeal 5041/13 Einat Gabai vs. Aminach Furniture and Mattress Industries Ltd, 21 January 2014, where the court discussed the period for submitting evidence and concluded that in legal proceedings before the Patent Office, the test for accepting evidence are more flexible (see paragraph 4 of Judge Hendel’s ruling). The District Court recently reached a similar conclusion in 34039-01-14 Mifalei P.M.S. Migun Ltd cs DSM IP Assets B.V. (12 August 2014) where the court allowed new evidence to be filed during the Appeal as the desire to reach the truth and fair justice was considered over-riding the procedural issues. in that instance, the Court concluded that patents, as opposed to civil law, the rules for allowing new evidence to be submitted were even more flexible. See also 5307-10-14 Orbotech Ltd vs. Camtek Ltd, 8 December 2015.

It appears that in this instance, where the material is anyway in the prosecution file, there is room to be flexible and to allow the parties to contribute to the public interests of the register being correct (i.e. allowing or disallowing patents on the basis of the evidence, not on procedural reasons preventing relevant evidence from being submitted) and further in the interest of efficiency (see Appeal 217/86 Schechter vs. Ambatz ltd. p.d. 44(2) 846, 857) by allowing the additional examples to be considered.

in light of the above, Professor Harrison’s second opinion as submitted in response to the Applicant’s evidence is allowed to remain in the opposition proceeding file as it was originally submitted, and the Applicant is given 30 days to submit short evidence relating to the supplementary examples as discussed in the paragraphs whose deletion was sought – paragraphs 78-84 and 86 of the opinion.

Costs for this interim ruling will be awarded as part of the main ruling.

Asa Kling: intermediate ruling re submission of evidence in Opposition to IL 169358 to Otsuka, 10 July 2016.


Reconsideration of a Patent Extension Term

August 10, 2016

last minute shopping

In an odd development, but not one that without precedent – see here and here – Dr Shlomo Cohen Law Offices has asked the Israel Patent Office to reconsider a judicial ruling.

In this instance, the original ruling relates to the Patent Term Extension (PTE) of IL 169693 to “Bristol Myers Squibb” and Pfizer that issued under section 64(v)5 of the Israel Patent Law. The original ruling issued in September 2015, and granted a patent term extension of 974 days until 18 May 2025. That ruling followed a challenge by the patentees to Examiner’s decision of 5 March 2015.

The way that Patent Term Extensions (PTEs) are calculated in Israel is detailed in Read the rest of this entry »


Statutory Damages for Reproducing Photographs

August 2, 2016

copyrightUnder the Israel Copyright Law 2007 there are statutory awards available for copyright infringement of up to 100,000 Shekels without proof of damage. There is a separate statutory award for damage to the moral right to be acknowledged as an author of a creative work that is up to an additional 100,000 Shekels .

Photographs are considered creative works and it is the photographer, not the subject of the photographer that owns the rights.

However, the would-be-plaintiff should be aware that although the courts can award up to 200,000 Shekels for copyright infringement by a photograph being reproduced without permission, they generally make much smaller awards.

Whether one sues under copyright infringement or under the Law of Unjust Enrichment the statutory damage despite lack-of-proof merely enables the court to grant compensation for estimated damages where the plaintiff has trouble proving the damage. Not every photograph is considered as automatically worth tens of thousands of shekels.

Here are four recent cases:

  • A website for an aluminium factory used an image taken from a competitor’s website without permission. The damages awarded were 3,500 Shekels.
  • A photographer took pictures of landscaped gardens, and the landscape architect reproduced these without permission. The name of the photographer was not mentioned. The compensation awarded for copyright and moral rights infringement was 10,000 Shekels.
  • A beautician and her husband sold cosmetics via eBay from a virtual shop. The cosmetics were made by Holyland Cosmetics. The beautician and her husband used photographs and text taken from  Holyland Cosmetics’ website and were fined 65,000 Shekels.
  • amir-peretzVery few photographs become iconic images. One that did was the famous picture of then Israel Defense Minister Amir Peretz looking interestedly at military maneuvers through binoculars without noticing that the lens caps were still in place. A journalist called Ephraim Shrir took the photo, and has since been busy suing every newspaper and media outlet that failed to acknowledge his moral rights to be recognized as the photographer, and that failed to pay him copyright compensation.  We have written about his claims in the past, see here and here, where both his copyright and moral rights were recognized by the courts. In a recent ruling however, Shrir sued HaAretz for reproducing the photograph, but they claimed that they had obtained the image legally from Associated Press (AP) who was acknowledged. The case was thrown out.

 

 


Publication on the Internet Prior to filing Israel Design Applications

July 26, 2016

Shoe publicity     Shoe publicity 2

Background

This ruling clarifies the extent that apparently pre-filing date publications on the Internet may be used to prevent design registration in Israel.

Although there is draft legislation making its way through the system, in Israel designs are currently protected by the archaic Patent and Design Ordinance of 1924, a legacy from the British Mandate. One of its oddities is that absolute novelty is required and there is no grace period. An even odder oddity is that only absolute local novelty is required and someone bringing a design into Israel for the first time is entitled to register it prior to importing and is entitled to up to 15 years of protection.

The previous Commissioner, Dr Meir Noam, grew tired of waiting for the Knesset and the Ministry of Justice to get their acts together and in a Commissioner of Patents Circular decreed that publication on the Internet, particularly in the design registers of foreign patent offices that are accessible on line from Israel via their websites,  would be considered as available in Israel and novelty destroying. Although arguably ultra vires, the Circular was never challenged. There remains a question as to what other Internet publications are novelty destroying, and the present ruling addresses this issue.

A third oddity is that unlike much of the rest of the world where Examination of designs is only for conformance to formalities, in Israel design applications are substantively examined in terms of novelty and the Examiners may search newspaper press-releases, Applicant’s website and, it transpires, various web-sites offering goods for sale.

This case

Naalei Nayot (1994) LTD submitted several Israel design applications including Application Nos. 55280, 55283,55288, 55289, 55291, 55270, 55271, 55278 and 55279. All these applications were submitted on 26 February 2014 in class 2(04) that covers footwear, socks and stockings.

The applications were submitted together with other design applications that were either registered or were abandoned due to issues raised during the examination process. These nine applications were rejected in a single office action of 17 June 2015 which resulted in the Applicant requesting a hearing that was subsequently held on 18 October 2015.

The nine applications fall into three categories as follows:

  • Applications 55288, 55291, 55270 and 55279 were considered as lacking novelty and originality as required by Section 30(1) of the Patents and Design Ordinance 1924. These rejections were based on two Facebook advertisements on the Applicant’s Facebook page. These advertisements from 20 February 2014 preceded the application date and appeared to show the shoes.
  • Applications 55280, 55283, 55289, 55291 and 55271 received office actions on 5 February 2012 that alleged a lack of novelty and originality as required by Section 30(1) of the Patents and Design Ordinance 1924 on the basis of sales illustrations from various advertisements. When the applicant responded to the objection, the Examiner again forwarded a publication on Naalei Nayot’s Facebook page.
  • Application 55278 was rejected on the basis of an advertisement on the Applicant’s website. In this instance, during the hearing, the Applicant withdrew the application and a decision issued on 18 October 2015.

Regarding the other eight applications, the Applicant does not consider the advertisements and the Facebook advert that the Examiner cited as being novelty destroying prior art.

The Applicant argued that advertisements by others are third-party Internet adverts that are not connected to the Applicant and should therefore be considered carefully. The websites are frequently updated marketing sites, and so their trustworthiness is suspect. In particular, the dated consumer comments relating to products, some of which are anonymous, may not have related to the specific products at all!

The Applicant supported their position from a ruling by Deputy Commissioner Jacqueline Bracha concerning design application 51593 and 50594 Tequila Cuervo, S.A. DE C.V. (9 June 2014), to the effect that a publication on a sales website does not necessarily knock out the novelty of a subsequently filed design application. As stated in paragraphs 44 and 45 thereof:

In our case, due to the nature of the website, it is reasonable to accept that the images and prices of goods shown will be updated in response to market changes. Unlike news-like content that is clearly dated or official press-releases and the like, the contents of advertising websites cannot be clearly dated and thus cannot be used to reliably establish a date for information published.

The above should not be understood to imply that only official websites of patent offices around the world have the required standard for the patent office circular (which states that applications for designs submitted in other jurisdictions that are accessible over the internet from Israel are considered as prior art preventing design registration in Israel where, under the current regime from 1924, only local novelty is required – MF) The circular allows other official publications to be relied upon including internet catalogs, and applicant’s websites so long as they enable a clear date to be established. Where the source of the advert is the applicant itself, in a press release or on applicant’s website, the applicant can respond to allegations of prior publication.

The challenge to the Office Action is, therefore, the date and trustworthiness of the advertisement cited by the Examiner as being prior art.

The applicant’s challenge to the Facebook publications cited by the Examiner fall into two categories. The first is that they are not full disclosures in that they do not show the design in full. Applicant submits that the cited publication shows a cupboard or a shoe box and the shoes included are not fully visible. The view is from above and from a distance, and does not teach the design to the extent it is taught in the application itself. The Applicant claims that the Facebook advertisement is not directed to consumers and is inherently different from sales sites that enable to the consumer to select and rotate the image of products displayed. They are inherently different from a catalogue or from a vendor’s website.
A second challenge raised by the Applicant is that the Facebook citations against the second group were first raised in a second office action during reexamination. Thus, with regard to the Facebook citation, we are not concerned so much with the fact of publication as per section 30(1) of the Ordinance, but with the degree of exposure of the design in the advertisements predating the filing date, with respect to their photographic quality.

Publication on General Sales Sites

After examining all the publications in vendors’ websites, the present Commissioner, Asa Kling, declared that the publications are reliable. As to the date of the publication, where this is not included within the advertisement on the website, it is possible to determine this from readers’ feedback which is dated. One can assume that if on a specific date there is a web surfer’s comment on an Internet page regarding a product for sale, that product was on sale at least on the date of the response. The content of the responses leaves no doubt that the products illustrated were those that are under discussion in this ruling.

One has to be careful when relating to Internet publications (see Request for Trademarks 187385 and 187386 (GHI) and the opposition to trademarks 200701 and 200702 (GHI stylized) in Gemology Headquarters International vs. Gemology Institute of America 28 May 2012 (henceforth GHI). In our case, after further consideration of the publications that the Examiner relied upon, it is determined that there is reliable information regarding the publication of the design in the general sales sites. As the inquiry stands up to the warning given earlier with regards to the Tequila case, the burden of proof is on the Applicant to show that the publication relied upon by the Examiner is unreliable and insufficient to serve as prior publication of the requested design.

As stated in GHI, the assumption may be rebutted by an expert opinion of by other means that the publication was not at the time indicated on the site, but the Applicant has failed to bring such proof.

This is similar to citations brought as prior art in patent applications. Of relevance in this regard is the notice from the European Patent Office concerning Internet citation (Official Journal EPO 8-9/2009 (the underlining is by Commissioner Kling):

“Establishing a publication date has two aspects. It must be assessed separately whether a given date is indicated correctly and whether the content in question was indeed made available to the public as of that date. The nature of the internet can make it difficult to establish the actual date on which information was made available to the public: for instance, not all web pages mention when they were published. Also, websites are easily updated yet most do not provide any archive of previously displayed material, nor do they display records which enable members of the public – including examiners – to establish precisely what was published and when…. Finally, it is theoretically possible to manipulate the date and content of an internet disclosure (as it is with traditional documents). However, in view of the sheer size and redundancy of the content available on the internet, it is considered very unlikely that an internet disclosure discovered by an examiner has been manipulated. Consequently, unless there are specific indications to the contrary, the date will be accepted as being correct”.

It is emphasized that as far as the surfers’ comments are concerned, it is evident that the website content was available for a long period, and this is sufficient to remove the novelty of (anticipate) subsequently filed design applications in Israel where there is no reason to assume that a host of readers comments all had their dates changed.

Having ruled that the dates are reliable, there is no dispute that the designs in the Internet website are fully disclosed and this renders the discussion regarding the quality of the Facebook publication moot, as is the question of when the partial publication on Facebook occurred. Thus the website publication of 55271, 55280, 55283 and 55289 is considered sufficient to render the applications unregisterable and the Examiner was correct to refuse them.

Publication on Facebook

There is a further claim that the publication on Facebook was never intended for the consumer. The Commissioner admits that he didn’t understand this claim. The intended recipient of a publication is irrelevant to the fact that there was a publication. The Examiner was correct that the fact the pictures were publicly available is sufficient to destroy the novelty of a subsequently submitted design application. This position is supported by the authors of Russel-Clarke and Howe on Industrial Designs, 8th ed., Sweet & Maxwell (2010), where, on page 13 it is stated:

In general there will be publication if articles to which the design is applied are manufactured, displayed or used in such a way that members of the public will or might see them. It is not necessary that the articles should have been sold. Prior use does not mean use by the public, but use in public as opposed to use in private.

According to the Examiner, the illustrations allow the shoes to be appraised by a visual test, in that the pictures of the featured design may be compared with other designs and what is required is a general appreciation of the design and not all the minor features thereof. The Examiner considered that the Facebook advertisement shows that stylistic elements of all the shoes shown in the illustration in sufficient detail to be novelty destroying.

Section 2 of the Ordinance defines a design as follows:

“Design” does not only mean the outline, shape, example or decoration that makes a mass-produced article distinctive, whether by hand, by machine, by chemical treatment, by a separate shape or an adjoined part, as it appears to the viewer in the finished product, and as can be visually determined. The term design does not include any method or principle or anything else other than a mechanical object.

In Appeal 7125/98 “Miforal Industries Jerusalem vs. Klil Industries LTD 57(3) 702 Nevo 8 May 2003, in paragraph 10 of the ruling this is explained:

The correct comparison needs to be made by comparing the general impression that a design makes on the eye of the relevant consumer. The emphasis is on the general impression from the article considered in its entirety., where the assumption is that the consumer does not have an experts attention to detail, but is also more interested that a passer-by Appeal 1187/94 Sela Concrete Devices LTD vs. Ackerstein Industries LTD [8] 291.

Thus in many fields, a design will be examined in its entirety rather than being analyzed into constituent elements. See  Patent Office ruling concerning designs 22424, 22433, 22783, 23767 Klil Industries LTD of 7 August 1997

By applying the general visual appearance test of the Ordinance as fleshed out in the case-law, the question in our case is whether the normal consumer exposed to a picture in an advertisement on Facebook would be sufficiently impressed by the general appearance that he would identify the shoes for which design applications were filed. The Commissioner considers this unlikely.

The nature of the Facebook advertisement is high-resolution coloured photographs. However, the photos show some of the shoes almost in their entirety and others are only partially visible. The soles of none of the shoes are visible.

As the Applicant noted, viewing the photographs on Facebook is insufficient to give a feel for the whole shoe, since each show is only shown from one specific angle which is a general front birds-eye view. The photos do not show the design elements of each shoe, such as decorative elements in detail. As the Applicant explained, apart from the question of the intention of the advertisement, the publication of the shoes in these advertising photographs is not the same as their display on a website showing all angles.

Furthermore, with respect to the articles under discussion,one cannot deny that the heel of a shoe is a significant design consideration. For many of the shoes shown, the heel is not illustrated, nor is the view from behind, which is of significance to the purchaser as will be detailed hereinbelow.

For example, with reference to design application number 55288,  the Facebook illustration does not show the heel engaging straps of the shoe, but only the front upper section.

With reference to Application Number 55279, the Facebook photograph leaves a difficulty in determining whether the shoe is a high-heeled shoe or a platform shoe. There is also a difficulty in understanding the internal profile of the shoe which is clear from the figures submitted. The show of design application number 55291 is not clear from the Facebook image which does not show clearly if the shoe has a high heel or not, and what the back-of-heel straps look like. These are, however, clear from the images of the application as filed.

Application 55270 is shown on Facebook, but the position of the back-of-heel strap and of other elements such as floral decorations is not clear. Thus it appears that the Facebook images do not reveal the design in its entirety.

Applications 25280, 55283, 55289, 55291 and 55271 are not clearly shown on Facebook.

In conclusion, Application numbers 55288, 55291, 55270 and 55279 were rejected whilst Applications 25280, 55283, 55289, 55291 and 55271 were allowed to be registered, (as noted previously 55278 was abandoned prior to the hearing).

Ruling by Commissioner Kling concerning various shoe design applications submitted by Naalei Nayot, 1 June 2016.

COMMENT

This ruling provides much needed clarification regarding to what extent a design shown in a photograph on an Internet website is novelty destroying. However, I respectfully submit that the commissioner is wrong in this case. (Actually that’s not strictly true. The Commissioner is right by definition. It is only a court ruling that can over-turn his decision. What I mean is that I think that the standard for an image to be novelty destroying should not be the same as for registering a design. A registration should include front, back, left, right, top and bottom plan views, and also a perspective view. I think that an earlier publication of a view that observers see should be adequate to anticipate a design application and to render it non-registerable.

After the Christian Loboton case, I understand that some people choose shoes because they have a particular colour sole and are willing to pay a premium for this. Actually this isn’t true. Some people are willing to pay more for a particular designer’s products, and will accept red soles as a distinguishing trademark. Clearly the arrangement of grips and studs on the soles of sports shoes have a purpose, and whether the ankle is strapped in or not is also of some interest, but, like the height of a heel, it is functional. Women wear high heels to look taller (yes I’ve also seen Kinky Boots and accept that they also cause the buttocks to clench sexily). Essentially heel size is functional. I think that people primarily choose the aesthetic elements of a shoe design based on the impression it provides to someone looking down from in front. It is for precisely this reason that the Facebook adverts show the shoe from this perspective.  A good design will be available for different sports with different grips on the sole and, I suspect, will be available in low, medium and high heel options. Furthermore, whether a shoe has high heels or not is usually visible from a raised front view.

Without viewing the particular images and the specific shoe designs it is difficult to challenge the Commissioner’s ruling, but I am skeptical.  I think that Former Deputy Commissioner Smulevezh was correct in the Ackerstein kerb-stone decision to rule that one views kerb-stones from the top and front and thus a publication not showing the underside and back surfaces is still a publication. I think this should apply to shoes as well; most people wear them on their feet at ground level. They chose shoes to compliment outfits based on what the shoes look like from a bird’s-eye view from the front. This is not a bird’s-eye view at all. It’s the view that others, and indeed the wearer himself / herself see.

I can accept that a purchaser may be interested in what the inside of a shoe looks like, but I do not consider this to be part of the aesthetic design protected by a design registration. Shoes are designed to be worn. When worn on a foot, the inside design features of a shoe are hidden, as is the sole.  I would expect Naalei Naot to complain about competitors making shoes that are otherwise identical except viewed from underneath or when considering the inside. This is why they register designs. An otherwise identical shoe to one that is registered design, that is differentiated by having a tartan lining and a manufacturer’s signature written on the part of the sole connected to the heel that does not get appreciable wear, should, in my opinion, be considered infringing.


Lapsed Patent for Monitoring Flow of Sewage Reinstated

July 25, 2016

renew

Israel Patent Number IL 214216 titled “SEWAGE FLOW METERING METHOD”to Roberto Cymmerman lapsed due to failure to pay the first renewal. The patent issued on 1 July 2015 and so the deadline for renewal was 1 October 2015. The payment was not paid on time. Nor was it paid during the six month grace period under Section 57 of the Israel Patent Law 1967. The fact that the patent had lapsed had not published.

On 30 May 2016 the Applicant requested reinstatement via legal counsel but a Power of Attorney appointing the legal counsel was only submitted after a ruin from 6 June 2016.

An affidavit from Patent Attorney Yoram Savyon who had previously represented the Applicant was submitted. From the Affidavit it transpired that the firm uses a computerized renewal system that was updated on receipt of the notice of allowance; with a calculation of the anticipated date of grant. Based on this, the final deadline for paying the forthcoming renewal was entered. (Further renewals are derived from the filing date and are entered with the filing of the application).

In this instance, the worker who manages the database did not enter the first renewal (which is based on the issue date), but did enter the subsequent renewal date. That the patent issued was reported by the office manager to the relevant worker and it is not clear why he failed to enter the information.

According to the Affidavit, some two months before the final deadline for paying the second renewal, i.e. in May 2016, the Applicants were informed of the deadline and then it transpired that the first renewal was not paid as the deadline was not entered into the system. The Affidavit also noted that for mistakes of this kind, the worker had already been fired.

Deputy Commissioner Ms Bracha noted that the patent itself was filed on 20 July 2011 and so the deadline for the second renewal (years 6 to 10) was 20 July 2017 and not 2016 as claimed in the Affidavit. This mistake raises eyebrows to some extent with regards to the facts detailed in the Affidavit as to how the mistake was discovered. Nevertheless, the mistake for not paying the fee in a timely manner that was detailed in the Affidavit does fit in with the requirements of Section 60 of the Law and so (intent and due care – MF) and so, provided the fee is paid in a timely manner, Deputy Commissioner Ms Jacqueline Bracha saw fit to allow reinstatement, together with an opportunity to the public to oppose.

Ruling by Ms Jacqueline Bracha concerning reinstatement of IL214216, lapsed due to failure to pay renewal fee, 20 June 2016.

COMMENT
In this case, a human error resulted in failure to insert a date into a spreadsheet or dedicated program by a poorly trained and incompetent clerk who was subsequently fired. In the Colb ruling, hand-written renewal records and a more excusable error were considered a lack of due care. I argued that even computerized systems required data to be correctly entered and extracted. In this case, there seems to be a bug in the system for calculating subsequent renewals in that five years and not six is hard wired into the system (or perhaps the filing date was typed in a year early by mistake?!). There is a second error blamed on the office junior who was righteously fired, but was he/she at fault? The main thing justifying this case being considered due care seems to be the use of a computer system, despite it having a bug and being operated by someone incapable of data entry. I consider this standard of due care to be overly reliant on there being a computerized renewal system in place. Objectively, there were apparently two errors here and no indication that there was any intention to pay the first renewal in a timely manner whereas in the Colb case there was one error.


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