Israel Patent Office Report 2015

June 13, 2016

Doch 2015.png

PATENTS

The Israel Patent Office has just published its report of 2015. Following the origami theme, and in an escalation from paper darts through hot air balloons, this time the cover shows an origami rocket. However, instead of plumes of gases, the rocket leaves a wake of bubbles. Go figure.

In 2015, 6,904 new applications were filed with the Israel Patent Office. This is the highest number since 2010, but still significantly less than 2006-2008. Noticeable increases in filing have occurred in chemistry, life sciences and computing related inventions. This reflects worldwide trends, as discussed by the EPO in their 2015 report.

The number of priority applications first filed in Israel was 830, which is up from 835 in 2014. It is still lower than any other year in the past decade. The number of non-priority applications, including Paris and PCT national phase filings, was 6074. This follows the over all new filing trends, and is more than any other year from 2011 to 2015, but less than 2006 to 2010.

Only 9.2% of Applicants for patents in Israel were Israelis. Indeed, the percentage of Israeli applicants has been steadily declining over the past decade, from 14.5% in 2006. The reduced filing fees for first time filers, which is similar to the US provisional filing fees using an agent, seems to have done nothing to encourage Israelis to first file in Israel, although I think there are significant advantages in so-doing, compared to going the US provisional route. Oddly however, there has been a steady rise in the percentage of Israel originating applications that are being allowed, when looking at the over-all allowance rate. Indeed, some 17.4 % of all patents allowed were filed by Israeli applicants.  The logical conclusion is that Israeli Applicants have an easier examination than their foreign counterparts. I doubt that this is the case. What may be happening is that Israeli Applicants are having interviews with Examiners and negotiating something allowable.

Applications are examined between two and three years from filing date, on average 30.4 months from filing (for PCT applications, this is from the PCT filing date, not national phase entry date). On average, cases take a further 29 months to allowance.

Who is filing into Israel?

Of the PCT national phase entries, 2911 originated with the USPTO as receiving office, 1203 with the EPO as receiving office, 454 with the International Bureau, 414 were national phase entries of PCTs filed with the Israel Patent Office as the receiving office. 194 cases came from Japan, 612 from China and 38 from Korea. Without the country of origin of the cases filed with the International Bureau being known and with a massive 626 originated ‘elsewhere’, it is not clear what this data really means. I suspect that a significant number of cases have come from the Swiss, DE and UK patent offices, but could be wrong.

Israeli Universities

Surprisingly, Ben Gurion University with 23 applications filed in 2015, has overtaken Yeda (Weizmann), Technion and Yissum (Hebrew University) as the most prolific University Tech Transfer filing in Israel. All the universities are down in Israeli filings compared to 2014 figures, except for the Haifa Technion. However, when PCT applications are considered, the number of cases filed last year is much higher, and is led by Yissum, Yeda, Technion, Ben Gurion and Tel Aviv in that order. What we suspect is happening is that Ben Gurion is first filing in Israel, whereas the other universities are first filing US provisional applications.

The Israel Patent Office has offered a 40% discount to Israeli universities but this doesn’t seem to have impacted their filing strategy. We are not surprised by this since the savings are marginal when considering the cost of drafting.

Other large filers

Biosense Webster, Israel Aerospace, Iscar, Elbit, Smart Medical Systems, Verint Systems and Omrix Biopharmaceuticals are major filers in Israel, and Corning, Oridion and Tel HaShomer hospital are significant local PCT filers.

Facebook Inc. Is the largest foreign filer into Israel, with a massive 136 applications in 2015. The next 14 companies are mostly pharmaceutical developers.

Divisionals

Chemistry, Pharma and Biotech applications are most likely to spin off divisional applications. This is not surprising, since the Specifications tend to be longer and less focused than mechanical, physics, medical device and computer type applications.

Applications that don’t get allowed

A significant number of Applications filed in Israel simply lapse. In 2015, 3,730 cases lapsed, 24 were rejected and 130 were expressly abandoned by the Applicant.

Section 17c allowances dropping

Only 14.5% of patents that issued were allowed under Section 17c of the Law. The number of 17c based allowances has been dropping steadily since 2010. In my experience, the Israeli Examiners are more likely to reject 17c requests based on their understanding of the art.

Fast tracking

Usage of the Patent Prosecution Highway (PPH) has increased, with some 390 cases being fast-tracked under the PPH (up from 96 in 2014) and a further 160 cases being made special for other reasons (age of applicant, suspected or actual infringement, etc.). So far, neither route has resulted in a significant number of cases being allowed.

Since the Green channel was established in 2010 for nothing to declare environmentally friendly patent applications, 133 cases have been fast-tracked.  In 2015, some 13 cases qualified and a whopping 3 patents issued.

Going full term

Hardly surprising, Chemistry related patents are the most likely to be renewed full term.

PCT Applications

Israelis filed 1329 PCT Applications with the IPO as receiving office and a further 128 applications filed by Israelis directly with the International Bureau selected the IPO as the International Search Authority. Interestingly, some 195 Applications filed with the USPTO as receiving office specified the IPO as the International Search Authority. In total, the Israel Patent Office issued some 1085 International Search Reports.  Israelis can choose to elect the USPTO, the EPO or the IPO as the International Search Authority. 819 out of 1329 (61.6%) chose the IPO which is marginally cheaper than the USPTO which handled 193 cases for Israeli Applicants, but significantly cheaper than the EPO which handled 317 cases.  It seems that the EPO is still considered the ‘gold standard’. EPO examiners are fluent in three languages as a requirement for their job. (I suspect from their names, that there are a very large number of US examiners who also speak a foreign language, often Vietnamese or Korean, but USPTO searches are usually very US focused).

TRADEMARKS

trademarks

The number of trademarks filed into Israel has stayed more or less constant since 2011.There has, however, been a significant rise of 23% in the number of International Applications filed with the Israel Patent Office (Trademark Division).  The numbers are a little distorted since until 2010, only single class applications were accepted. Now multiple class applications are allowed. If one considers new applications multiplied by the number of classes, in 2015, some 20,525 new cases were filed which is almost double the number of cases in 2005.

Some 24% of trademark applications filed in Israel are filed by Israeli companies. An almost identical percentage (23.7% were filed by US corporations. 6.7% were from Germany, 6.1% from Switzerland, 5% from France, 4.3% from China, 3.9% from UK applicants, 3/5% from Italy, 2.2% from Japan and 1.7% from Turkey. The remaining 18.8% came from other places. Since 2010, the proportion of Applications filed in Israel by foreign entities has crept up from 70% to 76%.

On average, applications take nearly a year and a quarter for examination to commence, but then things move quickly and typically applications are then allowed within 3 1/2 months.  Unlike patent applications where acceleration is discretionary and requires due cause, trademark applications may be accelerated merely by paying a fee. 438 cases were fast tracked in this manner.

By the end of 2015, there were 144,490 registered trademarks in effect, or 184,840 cases if multiple class marks are considered as separate cases.

Under the Madrid Protocol, and lumping Europe together as marks designating the EUIPO, Israel is the 18th most popular destination trailing Vietnam and Kazakhstan but ahead of Belarus and the Philippines.

DESIGNS

During 2015, the Israel Patent Office Design Department underwent major efficiency improvements. The backlog from filing to examination was reduced to 5 1/2 months and during 2016, is expected to be reduced still further, to only three months. The Examiners have begun listing all required amendments in each office action, so there are typically fewer iterations and applications are typically allowed within a year of filing. This is considered highly desirable as designs typically have an ever shorter commercial life as product lifespans decreases. Published designs are now searchable on-line, making redundant trips to the Israel Patent Office merely to inspect the records.  The full design registrations may be downloaded at the press of a button. There is a brand new Design Law making its way through the Knesset, which should replace the current 1924 Design Ordinance. During 2016, on-line registration and prosecution should be possible.

in 2016, a total of 1532 design applications were filed. This is about average for the last decade with a high of 1775 applications filed in 2008 and a low of 1351 in 2013. A total of 1,744 applications were allowed, which is the highest number ever.

14.4% of design applications (221 in total) were for building elements in class 25. 11.7% (180) were for containers. 10.6% (163) were for clothing; 8/1% (125) were for furniture, and  6.8% (105) for other household goods. 72% of Applications were for Israeli designs; 9% for designs originating in the US, and 4.5% for designs from Brazil. This anomaly is due to Grendene – a shoe manufacturer, and Stern a jewelers. 3% of designs come from Switzerland and from Holland, and 2% each from Italy, Luxembourg, France and the UK.

The new and somewhat Draconian three-month to respond to an office action regulation coupled with the requirement for examination to be completed within 12 months, has resulted in 1,178 applications being rejected.

It seems that most designs are renewed for a second five-year period, but few are kept in force for the maximum 15 years.

The major applicants is Klil, a manufacturer of aluminium profiles for window frames and the like, with 81 applications This is followed by Naot, a shoemakers, with 64 applications. Monkey Business Design Israel LTD and Ototo Design LTD have 34 and 18 applications respectively. Other local users of the design registration system include another aluminium profile manufacturer, a further couple of design houses, another shoe manufacturer, Karshi, a manufacturer of mass-produced Judaica and Hassidic figurines, and Keter Plastics.

 

 

Overall, Israel ranks 15th for PCT applications and 30th for both trademarks and designs applications. Considering the relatively small population, this is quite significant.

 


Refael Opposes Israel Aircraft Adding Evidence in Patent Opposition

May 14, 2016

decoy

Israel Patent Application Number 190197 to Israel Aircraft Industries titled “A Method for Performing Exo-Atmospheric Missile’s Interception Trial” was allowed and published for Opposition purposes. Refael Advanced Weapons Systems LTD opposed the patent issuing.

After a hearing of the evidence on 20 January 2016 and before the parties submitted their summation statements, Israel Aircraft Industries requested submitting a copy of PCT/IL2009/000303, the international application claiming priority from IL190197.

 

Section 67 of the Patent Regulations 1968 states that the end of the evidence stage is the hearing, and further evidence may only be submitted at the discretion of the Commissioner of Patents:

Neither Applicant or Opposer may file further evidence unless with the permission of the Commissioner.

The consideration for allowing such late submissions are the relevance of the evidence. See IL 179840 Aminach Furniture Industries vs. Moshe Gabai et al. (20/11/2014) Section 12. The question of relevance means the likelihood of the relevance swaying the decision if allowed.

The courts have detailed additional considerations for allowing late evidence in Civil Appeal 579/90 Mordechai and Gila Rizin vs. Rsipporah bin Nun (5/7/1992) and includes the type of evidence, where a simple technical fact is more easily submitted than a complex and tenuous scientific or legal argument, the stage of the proceedings, and whether or not the side bringing the evidence could and should have known about it earlier. However, as the Supreme Court ruled in the Aminach Appeal, the Patent Office has a slightly different duty to that of the courts in that it does not merely arbitrate inter-partes proceedings, but is responsible for the integrity of the patent register, meaning that it has a public responsibility to prevent patents from issuing where they lack novelty or inventive step.

The issue here is that the original application used the term ‘decoy’, but in the international stage, the term ‘dummy target’ was substituted.  The additional evidence was submitted after the opposer related to the change in terminology during the hearing, during cross-examination of the Applicant’s witness Dr Robinski. Following the witness’ response during the hearing, the Opposer alleged that the Examiner had been misled by the Applicant switching the figures and terminology from ‘decoy’ to ‘dummy target’, followed by claiming that the prior art related to decoys whereas the present invention related to dummy targets.

The Applicant responded that the International Application which he wished to submit as evidence, showed that there was no attempt at deceit. Furthermore, the International Application was before the Examiner when this application was examined. The Opposer does not deny this, and the whole International file-wrapper including the International Search Report were before the Examiner.In such circumstances, it is highly doubtful that if the International Publication had been cited during the hearing by either party, that the opposing party would have opposed this as submission of new evidence.

The parties disagree as to the relevance of the international application and to whether it sheds light on the patentability of the Israel Application and whether the Examiner was misled.

Without relating to the main issue of patentability and misleading the Examiner which belongs in the ruling and not in an interim-judgement, the Commissioner, Asa Kling, is willing to allow the International Application to be submitted as additional evidence at this late stage of the proceedings.

This is justified, since it is clear that the Applicant would not have needed to file this additional submission if it were not for the line of attack taken by the Opposer at the hearing. Consequently, it does not appear that the Applicant was holding back this evidence to spring it on the Opposer at this late stage. Citing 2212-11-12 Merck & Co. Inc. vs. Teva (6/12/2012): To the extent that allowing this evidence to be submitted now, disadvantages the Opposer, this can be dealt with in the costs ruling. Consequently, the International Application may be submitted as additional evidence.

The Applicant has 7 days to submit the International Search Report together with an Affidavit. The Opposer will then have a further 7 days to cross-examine the signor of the Affidavit about this additional evidence. Following this, a decision regarding the future of the proceeding will be given.

Costs for this stage will be addressed in the costs ruling after the final decision.

Opposition to IL 190197, Interim Decision by Assa Kling, 14 April 2016.

COMMENT

In duck shooting, a decoy is an artificial duck, often made of wood, that attracts other ducks to a body of water, so that they can be shot. I assume that taking out missiles is somewhat different, and if the wrong term was used, it was more likely due to imperfect English of the patent attorney, possibly mislead by the inventor who typically has even poorer English. It is unlikely that there is an attempt to mislead.


Booking.Com

April 8, 2016

bookingcom

Booking.com is a web-based hotel booking website, as anyone who is looked into booking hotels over the Internet will be aware. They have a great domain name, use website traffic promotion tools and, since they get a lot of traffic, have a good google rating.

The company has attempted to register Israel trademark no. 244245 for the word mark “booking.com” in classes 39 and 43. By wordmark, the intention is the word BOOKING.COM without any colours, background or font. The application is a national phase entry of a Madrid Protocol international application.

The list of services in class 39 is as follows:

Arranging of tours; reservation and booking of travel tickets; information, advice and consultancy regarding the aforesaid services, also related to destination issues; the aforesaid services, also provided by travel agents, tour operators and tourist agencies; the aforesaid services also provided electronically

The list of goods and services in class 43 is as follows:

Hotel reservation services; reservation of holiday accommodations, also in resort areas; providing information about hotels, holiday accommodations and resorts (accommodations), whether or not based on the valuation of customers; information, advice and consultancy relating to the aforesaid services; the aforesaid services also provided electronically

The trademark Examiner rejected the mark as being generic for the services covered. The Applicant provided an affidavit of the CFO, Olivier Jean-Marie Bisserier, which testifies to an impressive usage by Israelis.

The Applicant argues that the mark is not generic but merely descriptive and thus able to acquire distinctiveness due to usage. Since the term booking is a verb and not a noun, it is not synonymous with the services. [MF – This is a very interesting and creative argument, however, my English is probably better than both Olivier Jean-Marie Bisserier’s and the attorney of record, and I consider the term booking to be both a verb and a noun. One has made a booking, or has a booking. In other words, it is both reserving and a reservation. Indeed, dictionaries give reservation as a synonym]. Applicant notes that the verb to book has other meanings, such as to arrest and for actions related to books. [MF – Here I am flummoxed. Not only is the word used as a noun and not a verb, but ne wonders if there is really a demand for people to have themselves arrested on-line. Furthermore,  does a betting shop make a booking or a book? Is to write or publish a book a booking? creative, but wrong].

Furthermore, the Applicant noted that various similar domain names had been registered in other countries. For example, homecompare.com for insurance is registered in the US, work.com is registered for computer games in the UK and in Israel, weather.com is registered for metorological equipment in the US, answers.com is registered in the US for consultancy and publicity services. The Applicant’s agent also related to verbal arguments provided in the Federal Circuit Court of Appeal in re Steel Building.com 75 USPQ 2D 1420. [MF – it seems to me that none of these cases are analogous in that homecompare.com does not provide homes or even compare homes, but provides insurance services; weather.com does not provide weather details or weather, but meteorological equipment, and answers.com does not provide answers, per se. Furthermore, as none of these are Israel precedents, they are irrelevant. Furthermore, even where a different mark has registered in Israel that an Applicant considers analogous to his case, the Israel Patent Office does not accept such cases as binding precedent or even as guiding].

RULING 

Deputy Commissioner Ms Jacqueline Bracha notes that the Applicant accepts that generic marks cannot be registered, so the issue in question is whether the mark is indeed generic or merely descriptive.

In this regard, The Deputy Commissioner started with a discussion of the Family Magazine case, and then cited from the Steel Builders case referred to by Applicant:

 “A generic term cannot function as an indicator of the source of a product, and thus as a trademark, because the relevant public understands the term primarily as the common name for the product. In re Dial-A-Mattress, 240 F.3d 1341, 1344 (Fed. Cir. 2001). This court’s test for genericness has two parts: first, the court determines the genus of goods or services at issue, and second, the court determines whether the term sought to be registered is understood by the relevant public “primarily to refer to that genus of goods or services.

The top-level domain Steel Builders.com provide design services and not steel-building services, per se. They are not welders or providers of steel beams for the building industry.

As to the general issue of whether a .COM after a generic word is enough to create distinctiveness, the Deputy Commissioner cited com, Inc. v. AOL Adver., Inc., 616 F.3d 974, 978-979 (9th Cir. Cal. 2010):

“There is extensive Federal Circuit precedent in support of our conclusion that the combination of “.com” and “advertising” does not result in a descriptive mark. The Federal Circuit has repeatedly affirmed the Trademark Trial and Appeal Board’s (“TTAB”) findings that marks similar to ADVERTISING.COM are generic. See In re Hotels.com, 573 F.3d 1300, 1304 (Fed. Cir. 2009) (HOTELS.COM);  [*979]  In re 1800MATTRESS.COM IP, LLC, 586 F.3d 1359, 1361-62 (Fed. Cir. 2009) (MATTRESS.COM); In re Reed Elsevier Props. Inc., 482 F.3d 1376, 1378  [***1314]  (Fed. Cir. 2007) (LAW-YERS.COM).  The Federal Circuit has been explicit that HN9adding “.com” or another TLD to an otherwise unprotectable term will only in rare circumstances result in a distinctive composite. See In re Steelbuilding.com, 415 F.3d 1293, 1297 (Fed. Cir. 2005) (“Only in rare instances will the addition of a TLD indicator to a descriptive term operate to  [**11] create a distinctive mark.”); In re Oppedahl & Larson LLP, 373 F.3d at 1174-76. This position comports with existing Ninth Circuit law explaining that, in the context of likelihood of confusion, the addition of “.com” to a mark generally does not strengthen the mark. See Brookfield Commc’ns. v. W. Coast Entm’t Corp., 174 F.3d 1036, 1055 (9th Cir. 1999).

“To allow trademark protection for generic terms, . . . even when [they] have become identified with a first user, would grant the owner of the mark a monopoly, since a competitor could not describe his goods as what they are.”Surgicenters, 601 F.2d at 1017 (quotation marks omitted). 7 A major advantage that AOL would get from trademark protection of ADVERTISING.COM is to foreclose competitors from using a vast array of simple, easy to remember domain names and designations  [**18] that describe the services provided. The effect is similar to that which would result if trademark law embraced the obviously generic ADVERTISING COMPANY as a protectable mark because it “ha[d] become identified with a first user.”” 

As to the Steelbuilding decision the Deputy Commissioner quoted Luke M. Rona, WHO ARE YOU? DIFFICULTIES IN OBTAINING TRADEMARK PROTECTION FOR DOMAIN NAMES, 8 Wash. J.L. Tech. & Arts 61, 75.

“Steelbuilding stands out as the one recent case where two generic words combined into a compound, coupled with a TLD indicator, almost created a descriptive mark. The failed marks in1800Mattress and Advertise were generic single words that failed to create a distinctive mark when joined with a TLD. While it is difficult to say that a standard for the descriptiveness of domain names as trademarks has emerged in the federal courts, several factors seem to increase the likelihood that a court will categorize a domain name as descriptive.

First, melding two generic words into a compound word creates the possibility of new meaning that could distinctly identify the company behind the goods or services provided, thereby satisfying the “Who are you?” test. Steelbuilding linked an adjective with a noun to create a composite verb, such that the Federal Circuit looked not only at the possibility of selling steel buildings, but alternatively, the actual construction of steel buildings in an online environment. The two words potentially functioned as a verb, thereby moving the mark from purely generic into possibly descriptive.

Second, where a possible double entendre exists, it is much less likely that the mark will be termed generic, and this likelihood decreases further when two generic words are spliced together. The mark in Steelbuilding could have been viewed as an adjective and noun or one compound verb, depending on how the words were interpreted. It is much more difficult for this kind of layered meaning to emerge from a single word like “mattress” or “advertising,” which largely remain confined to one part of speech.”

Furthermore, the dictionary definition from the Miriam Webster dictionary on-line is:

“an arrangement for a person or group (such as a singer or band) to perform at a particular place; an arrangement to have something (such as a room) held for your use at a later time; soccer : the act of officially recording the name of a player who has broken the rules in a game; he act of one that books; an engagement or scheduled performance; reservation.”

Not only is booking a generic term, but its usage for hotel rooms is the example par excellence that the dictionary uses to illustrate the term.

Ms Bracha noted that the booking.com logo in white lettering with particular font and blue background stylized marks registered in Israel as 252107, 252108, 199137 and 199136, and elsewhere. This is the appropriate level of protection.

It would be innaproriate for a generic wordmark to register,which could then be used to prevent competitors using other generic domains such as mybooking.com, bookinghotels.com, hotelsbooking.com and hotels.co.il to provide similar services.

Although booking.com was registered in New Zealand, it was rejected in the US, Japan, South Korea and elsewhere.

The mark remains refused.

Rejection of BOOKING.COM wordmark, Ms Jacqueline Bracha, 9 March 2016


Should the Israel Patent Office be Colour-blind?

February 24, 2016

One of my esteemed colleagues in the private sector brought my attention to the following advertisement:

ראש ענף (בוחן /ת פטנטים – צוער /ת)
חברה: ממשלתית / ציבורית
מקום העבודה: ירושלים
סוג משרה: משרה מלאה, עבודה ציבורית / ממשלתית
משרה זו מדרוש /ה ראש ענף (בוחן /ת פטנטים – צוער /ת) מיועדת לבני העדה האתיופית בהתאם לחוק החברות הממשלתיות.

דרישות: תואר אקדמי בהנדסה או במדעי הטבע.
אין צורך בניסיון קודם לדרגה תחילית.
במדעי המחשב או הנדסת מחשבים ותקשורת, מכשור רפואי, כימיה אנאורגנית
או לימודי רוקחות /פארמקולוגיה
ניסיון: רצוי ניסיון בתחום הפטנטים.
כישורים אישיים: כושר ניהול משא ומתן, כושר לקיים יחסי אנוש תקינים.
ידיעת השפה האנגלית כדי קריאת ספרות מקצועית, כושר הבעה בכתב ובעל פה
ברמה טובה בעברית. המשרה מיועדת לנשים וגברים כאחד.

Roughly translated:

The vacancy for a departmental head (Patent Examiner – trainee) is earmarked for members of the Ethiopian community as per Government Companies Law.

requirements:

An academic degree in engineering or natural science (no experience is needed for a starting salary)

Cmputer Science, Computer Engineering, Telecommunications, Medical Devices, Innorganic Chemistry or Pharmacology

Experience: Patent Experience Desirable

Personal skills: negotiation ability, acceptable interaction with people

Sufficient knowledge of English to read professional literature and to communicate at a good level in Hebrew both  written and oral.

The job is equally designated for men and women.

COMMENT

I am generally opposed to all forms of discrimination including those considered as ‘corrective preference’. I think advertisments like this are demeaning. that said, there is social stratification in Israel. 25 years ago I knew an Ethiopian immigrant who was doing a Masters in the Technion. He came from a professional family in Adis Ababa and spoke excellent English. Children of Ethiopian immigrants from Gondar who were basically subsistence farmers in the third world, do not get the support with school work that my wife and I can give our children. There is certainly an education gap that leads to social problems, and unfortunately, there is some racism in Israel. The Israel Patent Office has, over the years, helped absorb Romanians, English (under the late commissioner Michael Ophir aka Martin Oppenheimer) and more recently Russians. There are a couple of Arab examiners whose jobs may have been earmarked for Arabs, so why not earmark jobs for Ethiopians?

In my village, the Ethiopians are fully integrated and our kids play together. But, with the exception of one who works for the foreign office, most are employed in respectable but non-academic type jobs, for example as bus drivers.

Ashkenazi Jews have been urbanised for two millenia. It will take generations before the different groups will be represented evenly in all professions. The issue could become mute due to marriage between different sectors. I know an English doctor who is married to an Ethiopian.

I Suppose on balance, if an Ethiopian examiner can serve as a role model and integrate Ethiopians more successfully, it is a good thing. Nevertheless, earmarking a job for one group invitably discriminates against others. Amarhic is not a useful language for an Examiner. A European immigrant bringing in addition to English, one or two other languages that help deal with technical documentations would strengthen the searches and examinations done by the Israel Patent Office.

So is this a positive devlopment? Feel free to comment.

 


Can a Patent Term be Extended in Israel on the Basis of a Patent Term Adjustment in the US?

February 8, 2016

calendar

Most patents are renewable up to 20 years from filing. The exception is basic pharmaceutical patents which may be renewed until 25 years from filing to ensure at least 14 years of post regulatory approval in Bolar countries.

The Israel Law relating to pharmaceutical extensions is complicated and has been amended several times. It is based on the Hatch Watchman Act in the US, and was legislated in Israel under a great deal of pressure from the United States. The Amendment itself has been amended a couple of times. Because of the large sums of money involved, drug development companies are willing to spend a small fortune to obtain extensions and Unipharm and Teva frequently oppose such extension periods.

Novartis applied for an extension for IL 154465 titled IL-1BETA BINDING MOLECULES AND USE THEREOF IN THE PREPARATION OF PHARMACEUTICAL COMPOSITIONS AND MEDICAMENTS.

The active ingredient is known as Canakinub, and this received regulatory approval in October 2010 under the trade name ILARIS.

In this instance, regulatory approval preceded allowance of the patent so Applicant requested an extension of the period for requesting an extension of the patent as defined in Section 61(XV). The patent was granted on 1 March 2011 and following this, the patentee requested an Extension.

It transpired that requests for extensions were filed in the US and in most of the European countries that can be used as the basis for a request for patent term extension as detailed in Appendix B to the amendment.

In the US, there are Patent Term Extensions (PTEs) which may be used as the basis for requesting a corresponding extension in Israel. But there are also Patent Term Adjustments (PTAs) which are not to be confused with Parents and teachers Associations considered different things entirely. The PTA is granted to compensate for delays attributed to patent office tardiness in the USPTO. They do not have anything to do with ensuring a term of enforcement from regulatory approval.

In this instance, the Patent Term Adjustment exceeded the theoretical Patent Term Extension so no Patent Term Extension was granted. In other words, there was regulatory approval in the US which starts the clock for usage. However, the corresponding US Patent never was extended by a PTE. The Israel Examiner therefore rejected the request to grant a PTE in Israel as there was no PTE in the US to consider under Section 64(IV)5.
Novartis were not happy with this decision and requested a hearing before the Commissioner on 17 February 2015. They submitted written arguments on 22 June 2015, a hearing was held on 22 July 2015, and on 11 August 2015 a supplementary affidavit was submitted by a Ms Leslie Fisher (maybe that should be Lesley?).

After the 11 amendment to the Israel Patent Law of 27 April 2014, Novartis requested an extension based on the Notice of Final Determination:

“A determination has been made that U.S. patent No. 7,446,175, claims of which cover the human biologic product Ilaris® (canakinumab), is eligible for patent term extension under U.S.C. § 156. The period of extension has been made determined to be 0 days.

The period of extension, if calculated using the Food and Drug Administration determination of the length of the regulatory review period published in the Federal Register of December 9, 2010 (75 Fed. Reg. 76739), would be 205 days.

Because the patent term adjustment awarded to U.S. Patent No. 7,446,175…of 1,131 days extends the original expiration date to September 24, 2024, which is beyond the 14 year exception of 35 U.S.C. 156(c)(3), the term extension is 0 days…”

(the underlying is by the Commissioner Assa Kling (we suspect that Novartis would have preferred not to draw attention to it).

Essentially what happened was that the US patent was in force for over 14 years due to the Patent Term Adjustment, so no Patent Term Extension was required.

The commissioner noted that the PTE was zero days and that section 64(I) of the Law states explicitly that an Extension of the basic patent relied upon has to be for one day or more and that this is referred to in the US as a Patent Term Extension (PTE) and in Europe a Supplementary Protection Certificate (SPC).

The Applicant has a different understanding of the correct interpretation of the Law based on its purpose and the legislative’s intent and argued that there was a lacuna. However, the differences between PTEs and PTAs was discussed in a ruling concerning a patent term extension for IL 181673 to Genetech.

The law, the previous decision and common sense implies that if the drug has patent protection of 14 years from first regulatory approval it does not deserve a patent term extension in Israel. Furthermore, the Commissioner referenced the understanding reached between Israel and the United States

“A reference PTE which results from marketing authorization delays means any period extending the Basic Patent by one or more days, up to the maximum period allowed under the Patent Act.
“…However, if a reference PTE has not been granted (either as an interim or final PTE Order) in the United States and at least one EU reference country prior to the expiration of the underlying Basic Patent in Israel, then no PTE (interim or final) shall be granted in Israel in respect of that Basic Patent.”

This supports the Law as formulated and the Commissioner’s understanding.
The rejection of the request for a Patent Term Extension in Israel was upheld despite the Applicant having been given an opportunity to present his case before the commissioner as per section 152 of the Law.
COMMENT
I am convinced by the ruling. I suspect it may be appealed though.


A Cut Throat Dispute

February 8, 2016

sweeney todd

Razer (Asia Pacific) PTE LTD filed Israel Trademark Application Number 242735 as shown below:

RAZER

The mark as currently registered relates to Computers; laptop computers; notebook computers; handheld computers; personal digital assistants; computer and video game apparatus adapted for use with television receivers or other external display screens or monitors; computer displays; computer monitors; computer hardware; computer sound cards; computer peripherals; computer and video game controllers; computer mice; computer keyboards; computer keypads; computer graphics tablets; computer pens; computer joysticks; computer trackballs; flight yokes for computer and video games; steering wheels for computer and video games; accelerator pedals and brake pedals for computer and video games; guns for computer and video games; motion sensors for computer and video games; audio equipment and apparatus; earphones; headphones; microphones; headsets; loudspeakers; apparatus for cable management for the aforementioned goods; computer and video games; computer mice mats; bags, pouches, cases and covers adapted for holding and storing the aforementioned goods; for gaming use and/or gamers and excluding, phablets and television in class 9; to Bags; messenger bags; travel bags; backpacks; knapsacks; for gaming use and/or gamers in class 18, to Clothing; polo shirts; T-shirts; hoodies; headgear; caps; sweatbands; for gaming use and/or gamers in class 25 and to Video game apparatus other than those adapted for use with television receivers; handheld video game apparatus other than those adapted for use with television receivers; parts and spare parts of the aforementioned goods as far as included in this class; bags, pouches, cases and covers adapted for holding and storing the aforementioned goods in class 28.

Not long afterwards, Razor USA LLC filed Israel Trademark Application Number 242450 for RZER covering Computers, tablet computers, and related accessories, namely, computer docking stations, mounts, stands holders and cradles for holding and charging computers, carrying cases for computers, protective covers for computers, protective or decorative skins, screen protectors, namely, fitted or plastic films known as skins for covering and protecting computers, input and navigation devices, namely, keyboards, mouse, track balls, and stylus for use with computers, computer memory, namely hard drives, portable and removable memory for use with computers, networking equipment, namely modems, routers and gateways for use with computers, batteries, power adaptors, computer cables, cable connectors, remote controls, headsets, speakers, sound systems for use with computers, and microphones and web cameras for use with computers and computer software; telephones; corded and cordless telephones for wireline service (PTT (post, telegraph and telephone) POTS or PSTN service); mobile phones, smartphones, and accessories therefore, namely battery chargers and power adaptors; all included in class 9.

Since both marks are similar and each cover computer related goods in class 9, following the parties failing to reach any agreement, a competing marks procedure was initiated.  On 26 January 2015 the parties were cross-examined and a date was fixed for submission of summaries from the two parties.

After several joint requests for extensions, the parties jointly asked to be relieved of having to file summaries and announced having reached an agreement in the various jurisdictions where similar competing marks procedures were taking place, however there was still a disagreement regarding implementing the decision in Israel and further extensions were requested.

On 12 October 2015 Razer Asia Pacific PTE LTD informed the Israel Patent and Trademark Office that a coexistence agreement had been reached and requested amendments to Application number 242735 to bring an end to the competing marks procedure.

Israel Application Number 242735 is a national phase of an International Application and the list of goods is in English only.  The requested amendments included limiting class 9 goods to “for gaming use or gamers”. In class 18, sport bags would be deleted and the remaining goods would also be limited to “for gaming use or gamers”. In class 25, the term sweaters would be deleted and the remaining goods would also be limited to”for gaming use or gamers”, and in class 28, reference to “games and playthings; electronic games and playthings other than those adapted for use with television receivers” would be deleted.

RULING
Section 22a(a)(2) of the regulations (1940) allow the Commissioner to authorize amendments to the lists of goods so long as they are by nature of clarifications or narrow the scope of goods, and so long that they are in no way widening.

There is a prima facie case that the amendments are all narrowing the scope of the mark. The Competitor, Razor LLC USA accepts the changes, apart from that to Class 9 where Razor LLLC USA wants the following amendment: “for gaming use and/or gamers and excluding, phablets and television“, and argues that this further differentiates between the goods that the two companies sell under the marks and minimizes still further, the likelihood of confusion. Consequently, both marks would then be acceptable for registration under Section 30 and this amendment better reflects that agreed between the parties.

Razer accepts the Israel Patent Office’s authority to decide on the appropriate limitation but disagrees that the narrower interpretation was agreed.

Neither party provided the Commissioner with a copy of the agreement. Razer even argued that it was secret as were the negotiations leading up to the agreement. Since he did not have access to it, the Commissioner could not interpret the agreement. Consequently this ruling is limited to the Commissioner’s authority to allow coexistence and parallel use.

Section 30 authorizes the Commissioner to allow parallel registration in cases where they were applied for in good faith and where the Commissioner sees fit.

Since the parties agree with coexistence in 4 classes, and only disagree about a selection of the goods in class 9, there is no evidence of inequitable behaviour or a will to deceive.

Although, Section 30 does not include the term to mislead, the case-law, such as Appeal 8778/04 Yotvata vs. Tenuva, 30 April 2007 page 30 makes clear that only amendments that are not likely to mislead the public regarding the source of goods may be registered.

The two marks in question are word marks for Razer and Rzer and whilst not identical, do look and sound similar. Coexistence has been deemed allowable in cases where there is a difference in the protected goods or in the customers for a product. For example, in  a 2001 decision concerning TM 206317, TM 207981 and 108389, Naaleh Itzik and Nimrod Manufacturing LTD 1979 could both register the brand Sahara since the Commissioner was persuaded that there was no likelihood of confusion between shoe and sandals. Where marks are similar but not identical, such as in the TM No. 174521 “Cosabella”, 178831 “Cocabella” case, it is even easier for the Commissioner to allow two marks to coexist in the same class.

In this instance, the Commissioner has enough evidence regarding the goods and usage of the mark to decide whether or not to allow coexistence and the appropriate descriptions of the goods, and such a ruling is final as per Section 10c of the Ordinance.

Razer (Asia Pacific) PTE LTD does not see it necessary to explicitly exclude phablets and television which anyway weren’t listed in the goods description for Trademark application no. 242735 Class 9.

The full list of goods available under Section 9 includes computer and video game apparatus adapted for use with television receivers or other external display screens or monitors; …. computer graphics tablets;….

The term phablet is some sort of mobile phone / tablet device. The Commissioner gave the parties the opportunity to explain why the additional disclaimer was or wasn’t required.   Razer (Asia Pacific) PTE LTD relied on the fact that TVs and computer graphic tablets weren’t listed. However, in the Afidavit of Mr Kornbrot that was submitted by them, the term tablet did appear and by considered as included in the term “other external display screens or monitors”. Furthermore, in the corresponding Argentinian, Canadian and Indian registrations, the terms Handheld computers, Personal Digital Assistants and Television sets were included.  Consequently, in this instance, the commissioner did not consider these goods as implicitly disclaimed, but would allow both marks to be registered if the mututally agreed disclaimers  and the disclaimer in  class 9 specifying “for gaming use and/or gamers and excluding, phablets and television “.

Ruling by Asa Kling Concerning IL TM 242735 “Razer” and IL TM 242450 “Razr”, allowing coexistence with appropriate restriction of goods covered. 11 January 2016.

COMMENT

The marks are very similar. The companies reaching a coexistence agreement is not necessary sufficient for the Patent Office to conclude that there is no likelihood of confusion.  However, it is not clear to me what the companies actually sell. I therefore cannot comment on whether it is likely that customers might be confused into thinking that products of one company originated with the other.

 

 

 


IL 214003 to Moshe Binyamin Remains Closed

January 17, 2016

Diy brain surgery.jpg      magic bracelet

In December we reported that a private inventor, Moshe Binyamin had filed a request for his closed patent application be reopened. The case was considered abandoned when the inventor failed to respond to the Notice Prior to Examination.

The inventor represented himself. Generously, the Deputy Commissioner Ms Jacqueline Bracha gave the applicant seven days to file a detailed Affidavit as to why the case was abandoned. Since the case had published and over a year had passed since it was abandoned and the applicant failed to provide an adequate explanation for the case going abandoned and did not attend a hearing, The case remains closed.

COMMENT
It seems that Ms Bracha was more than generous towards this inventor. Representing oneself in legal matters is not usually a good idea.

The invention is for some sort of bracelet with magical health powers. This is a very good idea. As the revival of the application was rejected it remains in the public domain. Unfortunately it doesn’t seem to be fully enabled and I doubt its efficacy.


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