Israel Patent Office Invitation to a Round Table

September 27, 2016

250px-king_arthur_and_the_knights_of_the_round_table

The Israel Patent Office has issued an invitation to all knights  the entire public including not just knights, but squires and serfs as well  to attend a round table on the topic of draft patent office circulars.

For those not initiated into our little world, Patent Office Circulars aren’t circular at all. They are rectangular sheets of paper with the noble proportions of A4.

In these rectangular circulars, King Arthur the Commissioner lays down decrees on issues that do not require the Knesset or the Minister of Justice to legislate. Such issues include what may be submitted in electronic format and what requires hard copy in triplicate, things like taxi-cab omnibus claims, Swiss cheese type claims, what is considered patentable subject matter and the like.

Israel Patent Office Circulars are not limited to patents, but also regulate designs and trademarks, training for apprentices trainee patent attorneys and the like.

The Israel Patent Office has recently began sending draft circulars to their chain-mail list for feedback.  The meeting of the Round Table is scheduled for 22 November 2016 and is an opportunity for all and sundry to present their views on such draft circulars.


Down to Earth Issues That an Israel Code of Practice Should Regulate

September 26, 2016

The following is a list of issues that I would like deliberated by the Ministry of Justice or the Knesset before legislating a Code of Practice for Israel Patent Attorneys. The same issues should be discussed by the IPAA and other relevant fora when considering voluntary codes.

In no particular order:

Patent Attorneys often provide opinions to third parties such as investors.If they have a conflict, maybe they should not be allowed to provide an opinion or should at least be required to announce their interest.

  1. Should patent attorneys that are not employees but outside service providers be allowed to own shares in their clients?
  2. Should patent attorneys that are not employees but outside service providers be allowed to draft applications for shares in their client’s business?
  3. May a patent attorney  that is not an employee but an outside service provider be allowed to jointly own a patent application with his client?
  4. May a patent attorney that is not an employee but an outside service provider be allowed to list himself as an inventor on a patent that he or one of his partners or an employee of the IP firm is filing and prosecuting?

Israel Patent Attorneys are specialists in IP Law but do not have a general legal background (unless, like me, they also have Law Degrees). If they are not licensed to practice law, regardless of their personal knowledge, what are the borders of what services can they legally provide? Attorneys-at-law tend to take a narrower view and patent attorneys a wider view. The border is not clear. Now is an excellent time to provide clarity and guidelines.

  1. May a patent attorney who is not an Attorney-At-Law provide legal information regarding IP related tax issues, the sale of IP, copyright and the validity of Israel patents.
  2. May a patent attorney who is not an Attorney-At-Law provide advice regarding service inventions?

What Patent related services may a self-styled patent expert, patent manager, IP manager, Search expert, IP Paralegal or other IP practitioner who is neither a patent attorney or an attorney-at-law be allowed to practice?

Section 154 of the Israel Patent Law lists the Rights of Patent Attorneys

154.—(a) Patent attorneys have the exclusive right to deal in Israel, for remuneration, with applications for patents, designs and trade marks and with the preparation of any document to be submitted to the Registrar, the office or to an authority for the protection of industrial property in another country, to represent the parties and to handle and represent in any proceeding before the Registrar or in the Office.

(b) This section does not derogate from the right of an advocate or of a State employee to perform the said acts within the scope of his functions.

There are all sorts of people who offer patent related services that are not formally qualified and are not regulated. Section 19 and 20 of the Israel Bar Law and Section 154 of the Patent Law which is reproduced above make this quite clear. The Law does not seem to have teeth, and there are a whole slew of non-patent attorneys that provide such services.  Nevertheless, it is not always clear what the meaning of the Law is. For example:

  1.  Is a graphics person who produces IP drawings for a patent attorney to file preparing a document for submission to the registrar. There are a large number of such  people offering services to patent attorneys on a free-lance basis. I’d argue this should be legal, but is it?
  2. What if a graphics person provides an inventor with such figures for inventor to submit himself?
  3. What if a company, say a prototyping company, produces such drawings and accompanying description for an inventor to submit himself?
  4. What if such a company also provides draft claims?
  5. What about a person who has worked for a patent attorney firm in the past or is moonlighting and still working for a patent firm. I am thinking of a paralegal or a trainee patent attorney or someone else who is neither an attorney-in-law nor a patent-attorney.  Does this happen? Yes. Is it illegal? I think so.
  6. What about a US licensed practitioner who has failed to pass the Israel Patent Bar, and merely helps clients obtain IP rights in the US? Such a person seems to be helping with the preparation of any document to be submitted to the office or to an authority for the protection of industrial property in another country. It seems to be illegal.
  7. But what about companies that are bona fide US firms (or European or other foreign firms) whose attorneys come to Israel a few times a year to meet with their clients? If they accept remuneration for advice given locally or work on an office action whilst here, is this illegal?
  8. What about US firms that operate in Israel and aggressively chase Israeli clients?

I would argue that their operating an office here is illegal and contrary to Section 154. The fact that they do not prosecute patents in Israel does not make their offering IP services to Israel clients directly a legal activity.

Advertising. The Israel Bar Code of Ethics places significant limitations on the type of advertising that Israel Attorneys-at-law are allowed to engage in. The voluntary code of ethics for Israel Patent Attorneys has similar limitations that are voluntary. The response to the Call for Comments that the IPAA sent out last time was drafted by Reinhold Cohn lawyers and called to limit, at least locally in Israel, patent attorneys from using any form of advertising that Attorneys-in-Law cannot use. There is some legitimacy and logic in holding patent attorneys to the same standards as Attorneys-In-Law, but there are counter arguments. If patent attorneys provide services that are hybrids of technical,,scientific and legal services, maybe they should have the option to market themselves in a more high-tech service provider and less legal manner? Note Reinhold Cohn themselves have moved from Legal South Tel Aviv to a High Tech park and moved out of a Bauhaus building and into a modern building in a high-tech park. They’ve changed their logo to something more distinctive and less legal looking, and adopted the high-techy acronym RCIP. Let’s take this one stage further. Reinhold Cohen has a sister firm of attorneys at law to provide complimentary services, handling oppositions, enforcement and the like.  Does this mean that a patent attorney cannot handle these issues? If a patent attorney does not want to handle these issues and wants to brand himself more like a technology service provider, may be he or she should be able to advertise more proactively?

Another corollary of aping the legal profession, is that patent attorneys would have to have  a dedicated premises for meeting clients that is not shared with any other type of business. This limitation of legal practices may be inappropriate to patent attorneys.

  1.   Two or more law firms can share office space without competing, if one handles wills and the other handles litigation, conveyancing (real estate law),  one handles criminal and the other civil, etc. There are 75,000 potential room-mates to share office space with. Patent attorneys don’t have this flexibility. If Reinhold Cohn’s proposal is accepted, they will have to rent a full office, or share with direct competitors. Note – small offices are hard to come by and the rents are usually much higher.
  2. Why shouldn’t a high-tech patent attorney specializing in start-ups rent office space in the offices of a venture capital firm, a high-tech incubator, a start-up trendy premises like We Work? It may not be appropriate for a large IP firm, but it may be a good solution for a sole practitioner or a small firm.
  3. Maybe in the modern world, a patent attorney does not need an office at all? One can have all one’s files on a laptop and work anywhere. I have a number of clients that I visit who have never visited by office. Maybe I don’t actually need an office? The code of ethics for lawyers is a document that was drafted in an earlier age. It has occasionally been updated. It may be inappropriate as a basis for an up-to-date profession that provides services at the cutting edge of technology.

Treatment of trainees and employees

I think trainees should be registered within less than a month of starting their apprenticship. They are entitled to a minimum wage. Percentage based remuneration is not appropriate for trainees.

Should percentage based remuneration be legal for any employee?

Should patent attorney firms be able to demand exclusivity from a licensed practitoner, whilst employing him on the basis of tax invoices for jobs on eat-what-you-kill basis?  I am aware of situations where employers do not fire employees working on a percentage basis but simply close the tap. The employer does not provide redundancy pay.

Some firms make employees sign non-compete clauses, contracts requiring them to stay for at least a year after qualifying, letters explaining that strange employment terms where the employees idea that he insisted on and other shenanigans. I think that the current proposed code of conduct is an ideal opportunity to address all these issues.


Do Israel Patent Attorneys Need a Code of Ethics?

September 25, 2016

legal-ethics

“I don’t believe in God. I do believe in Judaism. I believe in ethics, morals.” Edgar Bronfman, Sr.

On 8 September 2016, the Israel Patent Office and the Ministry of Justice Issued a Call for Comments regarding a Code of Ethics for Israel Patent Attorneys.

The deadline for responding is 26 September 2016. One presumes that no committee is going to do anything until November as, with the Jewish Festivals, there are about 5 working days in October. This combination of facts implies that the authorities do not particularly want responses from the IP industry it is proposing to regulate.

I see this as a shame. The entry-level qualifications for the patent attorney profession in Israel are a science or engineering degree and two years on-the-job training under a licensed patent attorney, exams showing drafting ability, knowledge of the Law and fluency in English and Hebrew. A very large proportion of the profession have at least one of: advanced degrees, 10 or more years of post-qualification experience, ten or more years experience in industry, a law degree, additional languages and a foreign patent attorney license. As a group, we are high achievers. Given a reasonable opportunity and encouragement to do so, I consider it likely that members of the profession could provide interesting feedback and ideas. On the bright side, the Ministry of Justice and the Patent Office did send the Call for Comments to all registered patent attorneys rather than prominently displaying a notice in a locked filing cabinet somewhere, or publishing a notice in the Tulkarem Local Advertiser.

aippiI would like to hope that it is no coincidence that the Call for Comments coincided with the most central biannual international IP conference last week in Milan. This unfortunate coincidence could explain why the esteemed Israel Patent Attorney Association does not seem to have balloted their members or held a meeting on the subject.

ipaaTo be fair, this is not the first time the issue has been raised. Last time, a response drafted by in-house lawyers at Reinhold Cohn responded on behalf of the Israel Patent Attorney Association. Their position was that the Code of Ethics for Patent Attorneys should be based on the Code of Ethics for Israel Attorneys of Law. I do NOT consider this position to represent the needs or interests of the industry as a whole, although it may well represent the interests of an IP group that includes a patent attorneys practice and an IP Law practice.

Do we need a legal code telling us how to behave or can we regulate ourselves?

Laws are like cobwebs, which may catch small flies, but let wasps and hornets break through. Jonathan Swift

Here is a list of things done over the past couple of decades by members of the profession. I am not naming and shaming. Many of you will know who did what. Others will just have to take it on trust that everything listed relates to real incidents:

  • The Business Software Alliance caught a former head of the Ethics Committee running Microsoft Office on a large number of computers, despite having one single-user license.
  • One Israel patent firm is knowingly employing someone who aided and abetted a murderer escape prison in the US. This is a felony. He is wanted by the FBI.
  • As a trainee patent attorney, I was fired when I came back from Compulsory Reserve Army Duty (explicitly against the law) since the supervisor had to finish off open-work. The head of the firm explained that this wasn’t the only reason. The other reason was that I couldn’t write patents and didn’t have what it takes to succeed.
  • There are a number of firms that give work to self-employed subcontractors which may raise issues of confidentiality and employment law.
  • Some firms have trainees working on a percentage basis, they lob off the top for time invested by trainers, not all of whom are licensed professionals themselves. Graduate employees often work full-time and don’t earn the legal minimum wage.
  • A secretary was fired by an IP firm when she went into hospital for a hysterectomy.
  • There is one patent attorney that passes off trainee attorneys as patent attorneys, effectively giving them licenses directly.
  • One patent attorney has put himself down as a co-inventor on applicant’s patent applications.
  • One patent attorney has put liens on client’s patent applications for unpaid debts.
  • One patent attorney was sued by his father for trying to steal the family firm
  • One attorney-in-law, working for an IP Firm killed both parents, his mother being the head of trademarks at the Israel Patent Office.
  • One head of an IP Firm regularly makes support staff work past sundown on Fridays in case he needs their services. We note that the firm does not do outgoing work in other jurisdictions, and the Israel courts and patent office are closed.
  • On behalf of the government in a service invention dispute, one Israel Attorney sued a Fortune 500 Company whose trademark portfolio he represented. (They subsequently transferred the portfolio from him).

I am NOT stating that any or all of the above should necessarily be reason to impose sanctions on one or another attorney or firm or that all of the above are illegal. I am, however, suggesting that they could and should all be considered in a draft of a serious code of ethics, and as a group they amply demonstrates that self-regulation does not work.

History shows that where ethics and economics come in conflict, victory is always with economics. Vested interests have never been known to have willingly divested themselves unless there was sufficient force to compel them. B. R. Ambedkar

There is a separate set of problems that the Code of Ethics does not address. To my mind it should:

  • What activities are legal for a patent attorney who is not an attorney at law to perform?
  • Which activities can be conducted by an attorney-at-law on behalf of his employee, but not on behalf of employee’s clients? In other words, can a patent attorney firm employing an attorney-at-law provide legal services via the employee lawyer that a patent attorney cannot provide directly?
  • Can a patent attorney practice or provide consulting services regarding assignment of ownership? valuation and sale of patents or copyright issues?

At present, due to the lack of commitment required to take on trainees, and the ease of dumping them half-trained, and patent attorneys who have provided some training to people who cannot get licensed and are not licensed due to not having the basic requirements, such as a law, science or engineering degree, there are a number of non-licensed practitioners.

code-of-ethicsShould not the Code of Conduct or Ethics, or whatever we call it clarify what IP services can or can’t be practiced by practitioners who are neither patent attorneys nor attorneys in law?

  • Can someone who is neither an Israel patent attorney nor an attorney at law licensed to practice before the Israel Bar provide IP management services?
  • Can someone who is neither a patent attorney nor an attorney at law licensed to the Israel Bar provide patent drafting services via a patent attorney working for him?
  • Can someone who is neither a patent attorney nor an attorney at law licensed to the Israel Bar provide patent valuation services?
  • Can someone who is neither a patent attorney nor an attorney at law licensed to the Israel Bar provide IP trading services?

Israel is party to a number of international treaties, etc. I am not sure to what extent foreign law firms are allowed to have local presence in Israel. One large US patent firm is actively involved offering patent services directly to Israeli clients.

foreign-invadersI personally think that such firms should not be allowed to operate locally. There are instances where Israeli Law requires the applicant to first file in Israel. Ownership issues are different in each jurisdiction, and even after the American Invents Act, the US system is still the most different from other industrialized countries. The creation and the sale of IP creates tax issues.  I don’t think that people who are not licensed individuals have the knowledge of these issues to be able to competently practice locally. When something goes wrong, who can one turn to???

Advertising is legalized lying. H. G. Wells

The Israel Bar limits the type of advertizing that attorneys-at-law may conduct. The Reinhold Cohn draft that was adopted by (forced upon?) the IPAA suggests that at least in Israel, patent attorneys should have similar limitations to those that attorneys-in-law have.

Is it reasonable that a US firm is running a vigorous advertising campaign that the current voluntary code of conduct for patent attorneys. the draft code proposed by the IPAA and the Israel Bar obligations for Israeli lawyers do not permit. Anyone who uses search engines to get to national patent office databases and the like, gets advertisements from the US firm in Facebook, on YouTube, etc.

I think it is a terrible state of affairs that local licensed IP practitioners are at a disadvantage to practitioners and firms that are not licensed locally in terms of acceptable forms of licensing and services that they are allowed to offer. the proposed Code of Professional Conduct should address this.

If you have religious faith, very good, you can add on secular ethics, then religious belief, add on it, very good. But even those people who have no interest about religion, okay, it’s not religion, but you can train through education. Dalai Lama

Lawyers are the only persons in whom ignorance of the law is not punished. Jeremy Bentham

IPROne issue raised in the Call for Comments related to on-going training. I think that those practitioners who don’t see the need for this are so ignorant that they can’t see where they lack knowledge. However, there is a need to ensure that practitioners can clock up on-going training requirements with relative ease. Should attendance of lectures at AIPPI, INTA and other international conferences be considered appropriate training that can count to legal requirements for on-going education? One of the best local conferences is “Best Practices” run by Kim Lindy and the IP Resources forum. Kim is not a licensed practitioner. Many of her speakers are, in one jurisdiction or another, could attendance of this conference be considered as on-going professional training?

I gravitate toward the law, I think, certainly more times than not, because it’s our best mechanism for legislating human behavior, and morality, and ethics. David E. Kelley

If we desire respect for the law, we must first make the law respectable. Louis D. Brandeis

cowboyWith Basic Laws offering freedom of occupation, it is not unreasonable for cowboy practitioners, non-licensed professionals to argue that the law should allow them to offer a wide range of patent related services. Foreign practitioners may feel the same way. Maybe there are problems with a code-of-ethics that has teeth. Nevertheless I think there are specific concerns that should be addressed when designing and legislating such a code. The current state-of-affairs is less than ideal. It does not protect the clients, employees and trainees or registered and licensed practitioners. This can’t be good.

Comments are encouraged. Please have the decency to post under your name though.

 


Wet-wipes, The Issue of Inventorship and the Responsibilities of the Patent Attorney

September 22, 2016

wetnap-were-ready-for-any-messThis ruling concerns a product that resulting from the contributions of two people who were formerly friends. A patent application was filed that named both people as both inventors and applicants. Later, after powers-of-attorney signed by each of the named inventor – applicants had been filed, there was an attempt to ‘correct an office error’, to list one of them as an inventor only. The corresponding PCT application and the national phase entry applications, including two issued patents in the United States only bore the name of one inventor and applicant. In an Opposition ruling the Israel Patent Office has now accepted that the second named inventor is indeed an inventor and also an owner.

Apart from emphasizing the need to determine who is the inventor and who is the owner of an invention when the patent is filed, the need to put everything into writing, and the dangers of working with friends, the case raises interesting questions regarding what contribution to reducing a patent to practice entitles someone to recognition as an inventor and whether this standard is the same in all jurisdictions. It also raises interesting questions regarding the duties and responsibilities of the patent attorney to ascertain the facts, or at least to avoid signing on contradictory statements regarding ownership and invention in different jurisdictions.

BACKGROUND

IL 152867 titled “Tissue Container With Auxiliary Compartment”is a patent application for a package of wet-wipes
rc-chairswith an adjacent container for nappy cream. The Application was filed back in November 2002 and listed Boaz Krystal and Liat De-Vries as inventors and owners. The patent application was allowed at the end of June 2010.

Subsequently, an Opposition was filed by WET-NAPS LTD and Liat De-Vries on 4 October 2010 under Section 31(3) of the Israel Patent Law 1967 on the grounds that Boaz Krystal was not in fact an owner, and that the patent was exclusively owned by Ms Liat De-Vries.
affidavitsMr Boaz Krystal and his wife Mrs Dorit Krystal each submitted affidavits. Mrs Liat De-Vries submitted a primary affidavit and a supplementary one in response to Mr Boaz Krystal’s affidavit. Wet-Naps Ltd. is owned by Mr Ilan De-Vries, who is Mrs Liat De-Vries’ husband. He also submitted an affidavit on behalf of the company.  Mr David De-Vries, a patent attorney at Reinhold Cohn & Partners who drafted and filed the application and is a cousin of Mr Ilan De-Vries, Ms Ronit Tal who is an acquaintance of Liat De-Vries and Mr Yoram Hadar who is an industrial designer, also submitted affidavits. A hearing was held and the parties submitted their summaries.

wetnapWet-Nap Ltd manufactures, exports and markets wet-wipes. The company had a business relationship with Packtop Ltd., a company directed by Mr Boaz Krystal that distributes wet-wipes amongst other things.   At the time of filing, both the Krystals and the De-Vries couple were good friends.

roobarbs-shedThere is no argument that Mr Boaz Krystal and Mrs Liat De-Vries met at the Wet-Nap Ltd factory, where Mr Boaz Krystal heard the idea of including baby ointment together with a package of wet-wipes from Mrs Liat De-Vries. There is also no argument that Mr Boaz Krystal and Mrs Liat De-Vries had some kind of collaboration, to develop and improve this invention and to file a patent application for it. Eventually a joint application was filed in both Mr Boaz Krystal and Mrs Liat De-Vries names. However, the parties disagree regarding Mr Krystal’s contribution to the development of the invention and consequently disagree regarding whether he is to be considered an inventor and owner of the patent.

The Main Documents in the Prosecution File Wrapper

roobard-and-custard-friendsThe Application was filed in November 2002 by Reinhold Cohn Patent Attorneys. The Application form lists both Mr Boaz Krystal and Mrs Liat De-Vries as joint owners due to them being inventions. Both parties filed Powers of Attorney, and the Filing Certificate gives both names.

On 10 December 2002, Adv. David De-Vries of Reinhold Cohn Patent Attorneys submitted a notice stating:

office-error“Due to an office error, the name of the inventor, Mr Boaz Krystal was inserted as an Applicant. With our apologies for this, we are submitting a new cover sheet and application form in duplicate, listing Mr Boaz Krystal and Mrs Liat De-Vries as joint inventors, but Mrs Liat De-Vries as the sole owner.”

On 10 December 2002, Adv. Edna Haruti, now Mr Krystal’s representative, submitted a letter in which it was stated that Mr Krystal was a joint owner together with Mrs Liat De-Vries as he had invented the tissue container with auxiliary compartment together with her.  Adv. Edna Haruti also noted that registration of the patent in the name of Mrs Liat De-Vries only was contrary to the agreement between the parties.

shimon-shalitOn 2 February 2003 Patent Attorney Shimon Shalit, then Senior Examiner in charge of formalities at the Israel Patent Office, responded to both Reinhold Cohn and to Mr Krystal that Mr Krystal could not be removed as an owner in the application as filed, since there was no indication that he had assigned his invention to Mrs Liat De-Vries prior to the application being filed. In absence of such proof, since Mr Krystal was not an employee of Mrs De-Vries, by virtue of being a co-inventor, he was also a co-owner.

(As an aside – On 12 March 2006 Mrs De-Vries submitted a divisional application of IL 152867 for certain applications of the invention. This divisional application (IL 174309) was examined, allowed and issued as a patent. On 1 December 2010 IL 174309 lapsed due to failure to pay the renewal fees. That patent is not directly relevant to this Opposition, but Wet-Naps Ltd and Liat De-Vries related to it in their claims).

procrastinateIn the protocol of a hearing held on 5 February 2007 before then Deputy Commissioner Noah Smulevezh it was decided to defer the issue of ownership until the examination of the application was completed. It was further ruled that Reinhold Cohn would be address of record, but would update Mr Krystal or his representative regarding actions taken to get his input before responding to office actions. The patent application was eventually allowed and published for opposition purposes, resulting in this opposition proceeding.

The Opposers’ (Wet-Naps Ltd and Mrs Liat De-Vries) Main Claims
wetnap

Mrs De-Vries and Wet-Naps Ltd claimed to have thought of the idea and developed the invention whereas Mr Krystal had merely provided technical drawings and a business plan for commercializing the product. They alleged that during the period in question, Mr Krystal provided technical and consultancy services to the company as almost an in-house service provider and as such, was exposed to the invention. They further claimed that Mr Yoram Hadar (industrial designer) and Patent Attorney David De-Vries provided sketches for the product that eventually evolved into the patent application. They further alleged that Mr Krystal had suggested a specific implementation (embodiment?) – storing the cream in a blister pack or sachets, which developed into  Read the rest of this entry »


USA PRO – Can Sales and Marketing Data Submitted To Israel Patent Office Be Considered As Trade Secrets?

September 19, 2016

USA PRO.pngUSA Pro IP LTD filed Israel Trademark Application Number 268322 for “ISRAEL PRO”.

To prevail against Examiner’s Objections during Office Actions, the Applicant has to provide evidence of use and awareness of the mark amongst the relevant public. Once a mark is allowed, it publishes for Opposition purposes and third parties may challenge statements made during Examination or in evidence submitted. Sometimes, the Applicant does not want this evidence to be available to third parties, and claims that they are trade-secrets that should be kept secret.   This ruling addresses the conflicting rights of the applicant and of third parties that are inherent in keeping evidence and submissions confidential.

Confidential-219x194.jpgThe request to keep the evidence confidential was submitted in accordance with Circular 028/2014 “Trademarks – Examination of the Application Files” from 26 August 2014.

To prove that the mark had acquired distinctiveness, the Applicant submitted a summary of the investment in marketing, invoices for sales in Israel, Britain and the US and world-wide sales data.The Applicant claims that making this information available could adversely affect its ability to deal with third parties that that it was in contentious proceedings with in various jurisdictions.

Section 23 of the Trade Torts Law 1999 defines the Commissioner’s authority to rule that trade secrets of an applicant or another will not be published. This rule covers all courts and bodies having judicial or quasi-legal authority in accordance with any and all laws. Section 5 of the Trade Torts Law 1999 defines trade secrets as:

“Business information of any type that is not in the public domain and cannot be easily and legally revealed by others, whose secrets provide the owner with a business advantage over competitors, so long as the owners have taken reasonable precaution to maintain the information confidential.”

From examination of the documents submitted and the requested confidentiality, it appears that they cover the applicant’s sales in fine detail, including the type of goods sold, prices, who they were sold to and in what quantities. Additionally, the alleged advertising sales budget was provided.

From the request to keep this information secret, it appears that this information is confidential and was not revealed to third parties. In this instance and since there is no a priori public interest in this information that outweighs the applicant’s request to keep this secret, it should remain confidential, at least at present, whilst the mark is under Examination.

access-deniedAs the Deputy Commissioner, Ms Jacqueline Bracha, does not think that revealing this information is required to enable third parties to review trademark applications for the purpose of opposing them, she does not see a need to make this information available to third parties and orders that it remains confidential. To support this position, reference is made to the Israel Trademark No. 243620 “Become ill? Injured?” Center for Receiving Medical Rights LTD decision of 1 December 2014. It is understood that to the extent that an Examiner decides to relate to this material during prosecution, he can do so in general terms, whilst giving enough details to serve the interest of the public following the prosecution. However, should the mark be allowed and an Opposition filed, the Opposer may be entitled to greater or even to full access to the confidential material. Thus in the event of the mark being allowed, an opposition filed and the Opposer requesting access, the issue will be revisited.

The request for confidentiality and this decision are made public.made public.jpg

Decision re confidentiality of trade-secrets revealed to the Israel Patent Office during prosecution of a trademark for USA PRO, ruling by Ms Jacqueline Bracha, 21 August 2016.


Extending the Deadline to File Complaint

September 13, 2016

genentechIL 146954 to Genentech is titled “HUMANIZED ANTI-ErbB2 ANTIBODIES AND TREATMENT WITH ANTI-ErbB2 ANTIBODIES”. It is the national phase of PCT/US2000/07366. The active ingredient is Pertezumab.

Pertuzumab received US FDA approval for the treatment of HER2-positive metastatic breast cancer on June 8, 2012.[3] Pertuzumab was developed at Genentech and is now owned by Roche which acquired Genentech in 2009. The drug received regulatory approval in Israel on 8 July 2012, and on 21 February 2013 a patent term extension was requested and this was granted until 11 May 2021.

patent-extensionThe patentee requested an extension of time for responding to an Examiner’s action under Section 161 of the Israel Patent Law 1967. As explained below, the intended response relates to the intention to publish the grant of a patent term extension until the date awarded. However, the intention published in the July 2016 journal.

On 19 February 2013 the patentee requested a patent term extension for IL 146954. The conditions set out in Section 64e(5) of the Law were in place, but at that stage there was no extension to the basic patent in the US as required by 64d(5).  In the January 2015 journal there was an announcement of the intention to grant an extension under Section 64e(5) 1 of the Law.

Afterwards, when the Section 64d(5) requirement was met, the patentee gave evidence of the patent term extension of the basic patent in the US. In that notice the patentee noted that they expected that the Examination would be completed and a corresponding extension of the patent would be granted.

Consequently, the Deputy Senior Examiner completed her Examination and, on 4 July 2016, informed the patentee that the patent was entitled to a 353 day extension until 10 June 2021, which is the length of the extension in the US, and is the shortest of all the extensions granted by an extension granting state, as per Section 64i(1) of the Law.  The Patentee had until 18 July 2016 to respond to this notification.

calculating-sec-154-patent-term-adjustments-1-728-1On 18 July 2016, the patentee responded to this notification. From the wording of the response it is clear that the patentee does not have any problem with the mathematics used in  calculating the patent term extension. However, the patentee noted their position that the Examiner should take into consideration not just the Patent Term Extension period in the US (PTE), but also the Patent Term Adjustment (PTA) in the US.

Without substantive reference to the relevancy or otherwise of the Patent Term Adjustment, it is noted that until the patentee requested that the extension NOT be published, Genentech (Roche) had not raised Patent Term Adjustment (PTA) related issues and even now, did not provide details of the Patent Term Adjustment granted by the USPTO. So the Examiner was under no obligation to relate to this additional time period.

Once the period for responding had passed, and on receipt of the Patentee’s response, the Examiner informed the Patentee on 18 July 2016 that she intended extending the patent protection period in  Israel by the Patent Term Extension (PTE) awarded in the US as per Section 65(e)(5)(3) and that this decision would publish for opposition purposes in the July Journal, and this happened. The request to extend the period for filing a critique was submitted on 11 August 2016, after the publication of the extension order. The contents of the critique, which has not been submitted, is unknown.

The reason put forwards by the patentee for the patent extension is based on the allegation that the current law damages their property rights and they are considering the possibility of changing the current legislation. Thus it follows that the patentee does not contend that the Examiner’s actions were in accordance with current legislation. The requested Extension is until the basic patent lapses, which is until 23 June 2020, or a further year if the Patent Term Extension is also considered.

Thus the patentee does not argue that the Examiner was acting in contravention of the law and admits that the Examiner’s actions were in accordance with current legislation. The Commissioner, Asa Kling, does not believe that a patentee’s intention to try to change the legislation is sufficient reason for the Israel Patent Office to delay publishing its actions; particularly when the action has already happened and happened in accordance with the Law.

So the Commissioner does not see fit to extend the period prior to publication.

In a footnote, the Commissioner does not think that his refusal in any way adversely affects the patentee, since he can always submit a detailed request for recalculation under Section 164(c) of the Law.

COMMENT

In a recent decision the Supreme Court weighed in on a challenge to the patent term extension rules as being unconstitutional, and found that the legislative body can write the rules as it sees fit, to find  a balance between the competing need of the drug developers to be able to profit from their investment and have an incentive to conduct research and development and to file applications, with the public good provided by competition, non-monopolistic markets with generic competition.

The specific issue of the differences in Patent Perm Extensions and Patent Term Adjustments was discussed in a February decision.

I can understand the drug manufacturers considering the current law unfair, but, in light of the amendment to the amendment, it does seem to reflect what the Knesset wants and has been upheld by the courts. I don’t think that Genentech – Roche will be able to  have the Law changed.


Israel Trademark No. 158991 “פליסקה, PLISKA, ПЛИСКА” (stylized)

September 12, 2016

pliskaIsrael Trademark No. 158991 “פליסקה, PLISKA, ПЛИСКА” (stylized) was registered on 1 September 2014 for alcoholic drinks in class 33. On 24 March 2005 half the ownership was transferred from Capital Food Company ltd. to D.I.L. Trade (Maglan) ltd.

On 2 February 2016, Vinex Preslav Joint-Stock Company filed a request to have the trademark struck from the register due to alleged lack of use during the previous three years. Vinex Preslav Joint-Stock Company is a Bulgarian company that claims to have used the term Pliska for alcoholic beverages since 1994, and has registered the mark worldwide under the Madrid Protocol since 2005. Vonex Preslav claim to have sales in Israel.

Furthermore, Vinex Preslav notes that there is an agreement between the registered owners, Capital Food Company Ltd. and D.I.L. Trade (Maglan) Ltd, that was submitted to the Israel Patent Office, under which D.I.L. Trade (Maglan) Ltd undertook not to use the mark from 1 January 2005 onwards.

On 31 March 2016, Capital Food Company Ltd. submitted their statement of case. They claim that their rights to the Pliska trademark outweigh those of Vinex Preslav, that they have used the mark in recent years and intend to continue using it. Capital Food Company Ltd allege that a cancellation request filed 14 years after a mark was registered is surprising and itself indicates that the mark has a reputation.

On 25 May 2016, Capital Food Company Ltd submitted a request to transfer the mark to Vinex Preslav in accordance with an agreement reached between the parties. However, on 31 May 2016, Vinex Preslav submitted their evidence to have the mark canceled and requested a decision based on the evidence submitted without a hearing.

Vinex Preslav requested that the cancellation ruling be based on a statement by Mr Vadim Farber, the CEO of Carmi International Foods Ltd, who is the distributor in Israel that Vinex Preslav uses. Mr Vadim Farber affirmed the existence and contents of an agreement between Capital Food Company Ltd. and D.I.L. Trade (Maglan) Ltd. under which D.I.L. Trade (Maglan) ltd. were obliged not to use the mark, and he further affirmed that the mark had not been used in Israel over the previous three years.

Vinex Preslav also submitted a statement from Ronen Menashe, an investigator at SML Israel Intelligence Ltd, in which he affirmed that his investigations had yielded no evidence of usage by D.Y.L. Trade (Maglan) Ltd. today or over the past ten years. Mr Menashe had held a conversation with the director of D.I.L. Trade (Maglan) Ltd. who explained that he conducted his affairs via a further company, since D.I.L. Trade (Maglan) ltd.  is no longer active. Furthermore, the new company does not make any usage of Israel Trademark No. 158991 “פליסקה, PLISKA, ПЛИСКА”. Mr Menashe also visited a number of shops spelling wines and spirits but none of them sold products with Israel Trademark No. 158991 “פליסקה, PLISKA, ПЛИСКА” on it, or any other products manufactured by D.I.L. Trade (Maglan) ltd.

On 21 June 2016, Capital Food Company Ltd announced that they no longer had any connection with D.I.L. Trade (Maglan) Ltd, would not be submitting evidence, and requested a ruling based on the material of record.

RULING

Section 41 of the Trademark Ordinance 1972 states:

41. [a] Without prejudice to the generality of the provision of sections 38 to 40, application for the cancellation of the Registration of a trade mark regarding some or all of the goods or classes of goods in respect of which a trade mark is registered (hereinafter – goods regarding which the cancellation is requested) may be made by any person interested on the ground that there was no bona fide intention to use the trade mark in connection with the goods for which it is registered in connection with the goods regarding which there is a request to cancel the registration and that there has in fact been no bona fide use of the trade mark in connection with those goods in connection with the goods regarding which there is a request to cancel the registration, or that there had not been any such use during the three years preceding the application for cancellation.

The purpose of the section is to keep the trademark register clean from non-used marks. See BAGATZ 67/71 “Prem” Ltd. vs Registrar of Trademarks, p.d. 28(1) 802, 811, where, with respect to the previous version of the section it was ruled that:

Section 22 is intended, primarily, if not exclusively, to purify the trademark register of all marks that are not in use and without bona fide intent to use. This is a national issue, so that registers are not weighed down with theoretical marks. It was not incidental that the legislators required bona fide usage after registration.

The requester for cancellation first claimed that the owners had never used the mark in Israel. Following the request to transfer the mark to them by the current owners, there is no need to cancel the mark, but only to transfer ownership and to delete D.I.L. Trade (Maglan) Ltd from the register.

It will be noted that Section 41 of the ordinance allows for full or partial cancellation of a mark by narrowing the list of goods covered.  There is, however, no provision for cancelling some owners whilst leaving others as registered owners.

The request to cancel the mark focuses on a lack of usage by D.I.L. Trade (Maglan) Ltd, and the investigator did not attempt to determine whether or not Capital Food Company Ltd was using the mark. Mr Farber testified that the owners were not using the mark, but Capital Food Company ltd themselves claimed usage in recent years but did not substantiate this with any evidence. Furthermore, Capital Food Company ltd transferred their share in the mark to Vinex Preslav, leaving the fate of the mark with the Commissioner, and without making any demands themselves.

The net effect of this is that the request is really one of correcting the register by deleting D.I.L. Trade (Maglan) Ltd as an owner. Section 38(a) of the ordinance states:

38(a) Subject to the provisions of this Ordinance, any person aggrieved by the non-insertion or omission from the Register without sufficient cause, or by any entry wrongly remaining on the Register, or by any error or defect in any entry in the Register, may make application in the prescribed manner to the Supreme Court or may, at his option, make such application in the first instance to the Registrar. 

The requester for correcting  the register is an aggrieved person and is covered by Section 38a). It has previously been established that an “aggrieved person” is no different from the “interested party” referred to in section 41 of the Ordinance (- see Seligsohn “Trademarks and Related Laws” 1973, page 105. The Supreme Court related to this in Civil Appeal 941/05 Wine Maker’s Cooperative of Rishon l’Zion and Zichron Yaacov  vs. The Kerem Company Ltd. p/d/ 61(3) where it is stated:

The phrase “he that is disadvantaged” is explained liberally in the case-law to include someone who suffers some disadvantage in some manner vis-a-vis some third-party who enjoys a trademark registration that they are not entitled to. This explanation is based on the English phrase “Aggrieved Person” as understood in the English Law that the  Ordinance brings into Israel Law.

 The requester for cancellation fulfils this precondition since, according to his statement, he’s used the mark in his home country for decades, has usage abroad and is interested in using the mark in Israel.

The Commissioner’s has wide authority in this regard, a previous commissioner ruled regarding Israel Trademark No. 66312 “NIPRO” in Abbott laboratories vs. Nissho Corporation 13 July 1999:

Since Section 38 deals with various changes to the register, from cancellation due to lack of distinctiveness and including transfer of rights in a mark from one entity to another, the considerations behind allowing amendments depends on the underlying justification and on the scope of amendment requested. There are cases where a Section 38 amendment will be allowed and others where it will not.

This is demonstrated by the fact that the legislators limited the period under which a mark may be cancelled due to non-registerability, but did not limit the period during which the register could be amended (see section 39(a1) of the Ordinance, and also the words of explanation (published on 27 July 1999 Page 525 in the protocols of the Law for amending Intellectual Property legislation in light of the TRIPS agreement 1999, Book of Laws 1721 from 30 December 1999, Page 48, which resulted in this section being added to the Ordinance.

Nevertheless, when considering a request to amend the register, it is necessary to consider the rights of third parties that could be disadvantaged by the amendment. Such third parties are not merely the parties themselves, but include competitors who if the amendment is not allowed, could file for cancellation of the mark due to lack of use.

Furthermore, the requester of the cancellation wishes to be registered as the user themselves, after testifying that the mark is not actually in use. The correct procedure is to have the non-sued mark cancelled and then to file a new application. The new application is then open to third-party challenges by way of opposition and allows other parties, their say.

Additionally, if the mark is indeed dormant for so long, this increases the likelihood that other parties may be using the mark and assigning the mark in this manner could leave such other parties exposed to infringement actions.

Thus even if the end result is that the requester of the cancellation be registered as the mark owner, this result should be achieved with consideration for the rights of others, and not by devious means.

In light of the above, Deputy Commissioner Ms Jaqueline Bracha rules as follows:

  1. The request to amend the register such that D.Y.L. Trade (Maglan) Ltd is replaced by Vinex Preslav as the owner is not acceptable
  2. If Vinex Preslav wishes to continue with the cancellation request, they have 30 days to show lack of use of both owners. Since Capital Food Company Ltd. have stated that they will not be submitting evidence themselves, the decision will issue based on the submission by Vinex Preslav only
  3. Vinex Preslav may abandon the cancellation request within 30 days; the mark will remain owned by two parties and Vinex Preslav may substitute themselves for Capital Food Company Ltd as the part owner as per the transfer of ownership record that was submitted.

Cancellation or Change of Ownership of Israel Trademark No. 158991 “פליסקה, PLISKA, ПЛИСКА” (stylized) Ms Jaqueline Bracha, 22 August 2016