A cost ruling and a tax question

April 17, 2018

This cost ruling highlights a tax issue where it seems to be unclear whether charges for legal work performed on behalf of a foreign entity concerning an issued patent (or trademark) in Israel incur VAT. It also highlights the problems that can occur where firms split and one professional leaves taking clients and on-going issues with him. What is required is professionalism and good between the management of the original firm and the new representatives to deal with costs incurred by the original constellation. Unfortunately, sometimes this good will is lacking.

alkermesAlkermes Pharma Ireland LTD has an exclusive license from Novartis to manufacture a drug in accordance with IL 142896 and its divisional patent no. IL 179379 entitled “Multiparticulate Modified Release Composition”. The active ingredient is Methylphenidate and is commonly known as Retalin. It is used for the treatment of attention deficit hyperactivity disorder (ADHD) and narcolepsy.

MediceMedice Arneimittel GmbH filed a request to cancel the relevant patents and the claim scope was narrowed in a preliminary action by Alkermes, but the cancellation actions were unsuccessful. Now Alkerermes has requested costs of $1,029,561.95 which comes to 3,626,118.18 Shekels costs.

History and Timeline

IL 179379 is a Divisional Application of IL 142896. The allowed patents published for opposition purposes on 8 March 2007 and 31 March 2011 respectively. Since no oppositions were filed, they issued on 9 June 2007 and on 1 July 2011. On 6 August 2012, an exclusive license for manufacturing was issued in the name of Alkermes.

On 14 November 2012, Medice Arneimittel GmbH applied to cancel the patent. The application was supported by a technical opinion provided by Professor Golomb.

On 7th February 2014, before a counter-claim and evidence were submitted, the patentee requested to amend the specification under Sections 65 and 66 of the Israel Patent Law 1967 which allows the scope of a challenged patent to be restricted by the patentee within the scope of the monopoly originally allowed.

On 6 March 2013, the Medice Arneimittel responded and on 14 March 2013 Notartis answered and on 17 March 2013 Medice Arneimittel GmbH requested permission to respond to the answer. On 5 May 2013, then Commissioner Kling scheduled a date for a hearing to discuss the amendment. In the hearing which was held on 4 June 2013, the Commissioner ruled that he case be conducted under Section 102(vi) as if the amendment was accepted, and after the cancellation proceedings be ruled, on the amendment would publish for opposition purposes.

In light of this ruling, Medice Arneimittel submitted an amended cancellation proceeding together with a further affidavit from Professor Golomb.

On 4 March 2014, Novartis/ Alkerermes submitted their counter claims submitted with an expert opinion from Professor Mark A Stein and Professor Joseph Cost.

On 2 June 2014, Medice Arneimittel submitted their counter-evidence including a further affidavit from Professor Golomb together with a request to submit a further three prior art publications. On 18 June 2014, the Commissioner allowed this extra prior art to be submitted, and allowed Novartis/Alkerermes to relate Read the rest of this entry »


November 8, 2017


LES Israel and IPAA invite you to an event on Wednesday, November 15, 2017, 09:00-
12:30 at ZOA House (אמריקה ציוני בית ,(26 Ibn Gabirol St. (corner of Daniel Frisch St.), Tel
Aviv (The presentations will start at 9:30).
The event will be dedicated to the topic:
Patent Term Extension Peculiarities
Israel and Europe
The topic will be presented by distinguished speakers, as follows:
 Mr. Liad Whatstein (Liad Whatstein, Adv.), Founding Partner of the Israeli law firm Liad
Whatstein & Co.:
Patent Term Extensions under Israeli law – The Eccentricities of The Local System
 Mr. Tjibbe Douma (Tjibbe Douma, Adv.), Senior Associate at the law firm of De Brauw
Blackstone Westbroek NV, The Netherlands; and
Ms. Tessa Malamud-Cohen (Tessa Malamud-Cohen, European and Israeli Patent Attorney),
Director, Patents, Global Intellectual Property of Ferring Pharmaceuticals/Bio-Technology
General (Israel) Ltd.:

SPC Squatting: SPCs Based on Third Party Marketing Authorization
 Mr. Tal Band (Tal Band, Adv.), Head of the IP Practice Group in the Israeli law
firm S. Horowitz & Co.:
Patent Term Extensions in Israel – When is it “Game Over”?

We will allocate some time at the end of the event for discussion and welcome comments
from the audience.
The event is free to LES Israel and IPAA members.
Non-members: NIS 70 charge.

Kindly confirm your participation by return email to les_israel@yahoo.com.

COMMENTS

The speakers are considered distinguished by IPAA and LES. I’ve cut and pasted their notification verbatim. I do not disagree, but merely wish to note, that the adjective is not one I chose. The speaker list is balanced in that Tal represents TEVA who usually are generics opposing patent term extensions (although recently trying to reinvent Copaxone to keep it evergreen). Liad works for the patent developers who try to obtain patent term extensions, and Tessa works in-house in the industry. I do not remember meeting Mr. Tjibbe Douma and suspect with a name like that, I would.

counting-sheepMy extensive practice has not involved patent term extensions since I split with Jeremy Ben-David, whose father, Dr Stanley Davis, drafted the Neurim patents for Circadin, whose UK Patent Term Extension went to the European Court of Justice, see here, here, here, etc, so the event has little interest to me personally, although is clearly important for the pharma crowd. Perhaps we should let sleeping sheep lie.


Become Ill? Been Injured? – ? חלית? נפצעת

October 17, 2017

This ruling concerns a Trademark Opposition filed by the Israel Bar Society against an Israel trademark application submitted by the Center for Realizing Medical Rights LTD, and follows a High Court Ruling on the legality of the services provided and a court ruling on alleged Contempt of Court. The ruling is of relevance to the IP community in light of unlicensed IP practitioners (cowboys) and this is discussed by me after reporting the ruling.

Livnat Poran.jpgThe Center for Realizing Medical Rights LTD filed a trademark application for “Become Ill? Been Injured?” on 2 January 2012 in Class 36 for “consultation services relating to tax attributes; consultation services relating to rights bestowed by insurance policies; all included in class 36, and for consultation services relating to realization of rights for health deficiencies or injury; consultation services relating to realization of social security rights; all included in class 45”.

On 17 September 2014, and after the mark was refused by the Examiner, the applicant appealed and a discussion was held with the Deputy Commissioner who, after considering the claims and evidence, agreed to allow the mark to be published for opposition purposes on 1 December 2014.

Israel BarOn 19 March 2015, the Israel Bar Association filed an opposition, and on 24 April 2015, Zechuti-Experts Regarding Medical Rights LTD also filed an Opposition. In an earlier ruling, Ms Bracha ruled that the Oppositions could be combined. However, on 1 November 2015, Zechuti withdrew their opposition, and the Israel Bar continued alone.

District Court.jpgIn parallel to the Trademark Opposition, the parties also fought a battle in the Israel Courts with the Israel Bar Asssociation filing 9279/07 Israel Bar Association vs. the Center for Realizing Medical Rights LTD with the District Court (Jerusalem), claiming that the Center was invading the legal space by providing legal services. The District Court decision was appealed to the Supreme Court in 4223/12 the Center for Realizing Medical Rights LTD vs. the Israel Bar Association.

After the claims and counter claims were submitted, the Opposer submitted the District Court ruling, the Supreme Court Ruling, a further decision regarding wasting the court’s time, and a couple of Affidavits submitted by Adv. Feldman as part of the legal proceedings. The Applicant submitted an Affidavit of their CEO as evidence.

Opposer’s Claims

OppositionThe Israel Bar Association submitted that the applied-for mark lacks distinctiveness and thus contravenes Section 8(a) of the Trademark Ordinance 1972; was against the public order and thus non-registerable under section 11(5) and was misleading and encouraging unfair competition contrary to Section 11(6). They also claimed that it was descriptive of the services provided and thus non-registerable. After a hearing on the issue, the Opposition became more focused.

The Opposer acknowledged that since the Center for Realizing Medical Rights LTD had been using the mark extensively (in radio advertising campaigns) it was widely recognized and had acquired distinctiveness, but argued that since the High Court had ruled that the Center for Realizing Medical Rights LTD should cease to offer its services, two grounds for opposition remained.

  1. The Israel Bar Association considered that the Center for Realizing Medical Rights LTD was still providing legal advice and so allowing them to register the mark would be against the public order, and
  2. The Center for Realizing Medical Rights LTD was no longer offering the services it had a reputation in, and so the marks had lost their distinctiveness and so could no longer be registered.

The Opposers also claimed that the public links the services provided to Ms Livnat Poran whose name appears in the advertisements, and not to the Center for Realizing Medical Rights LTD, so considers the mark as misleading.

The Applicants Claims

applicantThe Applicant refutes the Opposer’s allegations and affirms that the marks are distinctive, not misleading and not against the public order. They accuse the Israel Bar Association of fighting a campaign to prevent them from benefiting from their trademark and for misusing the Opposition proceeding. As to the two main claims, the Center for Realizing Medical Rights LTD considers that the alegations that the mark is no longer linked to Ms Foran, and that the Center for Realizing Medical Rights LTD is continuing to offer legal services, are both widening of the grounds for the Opposition. Read the rest of this entry »


Annual General Non-Meeting of IPAA

June 1, 2016

 

 

AGM

For illustrative purposes only       IPAA

I missed the AGM of the IPAA (Israel Patent Attorney Association) yesterday. I would have gone to the meeting when originally scheduled, but the last-minute cancellation and rescheduling at short notice was inconvenient.

I was attending a couple of Master Class sessions at the IPR best practices conference Tuesday morning. I could have hung around in Tel Aviv for the AGM, but, after INTA, had a lot of work backlogged. I also had a family wedding up North in the evening.

I understand that there are about 200 registered members of the organization, of whom 15 turned up. No doubt, some of the others, like me, had previous engagements. Others simply could not be bothered to attend, what was, at best, a waste of time. The votes were carried by a large majority of 40 or so, since proxy voting is allowed. Thus Reinhold Cohen as a firm, set the agenda, and with only 2-3 members of that firm turning up either, there wasn’t much point in making impassioned speeches to influence the voting, as the voters weren’t present anyway.

In the recent past, I have suggested the organization files an amicus brief in support of Colb’s anticipated appeal against the Israel Patent Office decision that without computer docketing, one is guilty of lack of due care. I spoke to Einav the day before the AGM and sent her the ruling and my comments. However, this suggestion was not discussed. But then again, apparently nothing of substance was.

There has been no attempt to find out why most licensed patent attorneys do not pay subscriptions and those that do, still do not attend the meetings.

On Monday, I spotted Einav, our esteemed co-opted chairperson, chatting at length with a non-licensed practitioner at the Best Practices Conference. I do not know what her position is regarding someone who ‘manages’ patent strategy and portfolios for clients, i.e. not an in-house employee but a service provider. The person in question describes himself as being a paralegal. He does not write patent applications. He may be good at what he does, however, there is a world of difference between working under supervision of a licensed attorney-at-law or a licensed patent attorney and taking the lead in managing cases where one cannot qualify as either, not having the basic qualification of a law degree or a science degree required to then work in house and pass professional exams.  If such a cowboy non-licensed practitioner makes a mistake, it may affect the insurance premiums across the industry. He presumably does not have insurance, not being a professional.

There are previously licensed US patent attorneys and patent agents who have surrendered their licenses pending disciplinary action, who are offering services in Israel. Their CVs, websites and Facebook pages are less than unambiguous as to their status. They do not come under the oversight of the Israel Patent Office disciplinary committee. There is also a felon wanted by the FBI who is working for one of the Israeli firms.

At the other end of the spectrum are US firms that have opened offices here and work with Israeli industry and start-ups directly. The legality of this is not clear. Where the in-house counsel of the client is a patent attorney or lawyer, there is someone in the picture who knows the law regarding where applications must first be filed locally, Israel labour law regarding employees, and the like. This is however, often not the case.   The code of ethics of the IPAA relates to making derogatory comments regarding other Israel Patent Attorneys. However, I have heard from Israeli practitioners that at least one prominent US firm with a large presence in Israel does not see itself bound in this regard.

I thik that the IPAA should relate to these issues. It is not. What the IPAA is doing, at present, is helping finance IP events organized by other bodies, such as the AIPPI. This may get IPAA committee members onto panels and chairing sessions, but I would argue that this is misuse of membership funds. The IPAA could usefully subsidize paid up members attending training events put on by others, including the IPR conference for example, but why use members’ subscription fees to pay for non-patent attorneys to be trained? How does this help Israel Patent Attorneys?

Note, I am not against patent attorneys training prospective or actual clients, running sessions for attorneys at law, or sponsoring such conferences. I contribute myself. This blog is primarily a vehicle for education that is open to all readers, professional or otherwise. What I object to is the use of the Association’s funds for this purpose.