End of an Era

May 26, 2017

Esteemed Out-Going Commissioner Asa Kling writes as follows:

Dear friends, users of the Israel Patent Office services,

As you may very well know, at the end of this month I will be completing the statutory 6 year term as Director of the Israel Patent Office (ILPO), Commissioner of Patents, Designs and Trademarks.

Six years ago I was handed a valuable deposit – the leadership of the ILPO. Since then, as my predecessors before me, I strived to maintain and improve this cherished deposit.

Upon departure, I am leaving a robust and growing patent office. In many ways, the ILPO has become a standard setting unit for the Israel government, as well as an example to other Patent Offices around the world. Alongside the significant improvement in the quality of the examination performed by the ILPO, the shortening of pendencies, the accessibility of the online services and the transparency of the ILPO’s operations, the ILPO enjoys a leading international status as befits a patent office of the Start-Up Nation.

Review of the ILPO’s Annual Reports shows the many changes it has undergone in recent years and the continuous increase in the scope and quality of the services provided to its stakeholders. Just to name a some of these achievements: going paperless and then fully online in all ILPO departments; starting International Searching and Preliminary Examination Authority operations under the PCT and successfully sustaining these international operations; promoting the new Designs bill and adapting the Designs Department operations to the anticipated significant changes in this evolving field; setting a high professional bar in examination of trademark applications while the amounts of international applications have grown immeasurably in view of the operation of the Madrid Protocol; preparing examination guidelines in all departments of the ILPO, while openly publishing them for public review and comment; maintaining full transparency, whether via the annual reports or by the ILPO website; promoting the ILPO’s character as a learning organization; introduction of an innovative employee incentive-pay scheme; organizational changes such as the nomination of team leaders and professional officers; and strengthening ILPO’s international status and in particular at WIPO. We also took an active part in the Governmental Regulation Impact Assessment project whereby we considerably updated many Commissioner’s Circulars and reduced their number, conducted an empirical study of the patent pre-grant opposition procedures in order to stimulate an informed public discussion, and improved the regulation of the Patent Attorney certification process towards a reform in this profession. We grew and evolved!

I owe a debt of gratitude to many. These achievements are actually those of the ILPO’s professional staff and managers who share the vision and bare the brunt on a daily basis. Without the support of the various officers of the Ministry of Justice and of many government units who recognized the importance of these tasks, little of would have transpired. It was a great privilege to lead such a formidable unit in the Israeli civil service.

I wish all success to the incoming Director, Mr. Ofir Alon, who will surely receive all your support and assistance for success in this challenging position and will promote the ILPO to even further heights.

COMMENT

klingonCommisisoner Asa Kling’s tenure did indeed bring many changes and improvements. Things are far more automated at the Israel Patent Office. Many of his decisions showed a great deal of sensitivity to complex issues. We wish him luck as he explores strange new worlds, seeks out new life and new civilizations and boldly go where no man has gone before,

 


Retiring Israel Patent Attorney Looking to Sell Business

May 26, 2017

REtirementA well-respected Israel Patent Attorney has had enough and is looking to sell his business as an on-going concern. There are over a hundred  patent, design and trademark files from a nice mix of 20 foreign and domestic clients. Contact me if interested, and I will forward your details to the attorney.

 


New Directives For Examining Israel Patent Applications

May 17, 2017
israel patent officeOn March 23, 2017, the Israeli Patent Office issued two new Directives; No. 034/2016 and 035/2016.  These apply to all patent applications having a first substantive Office Action that issued after March 27, 2017.

Unity of Invention
unityPatent applications may describe more than one invention but the claims should relate to one invention only. In applications where more than one invention is claimed, instead of issuing a lack of unity objection and letting applicant address the issue and elect a claim set to be examined, the Examiner will generally examine the first claimed invention appearing in the claims, but has the discretion to allow the Applicant to elect the invention to be examined. One cannot respond to an office action by replacing the claims to an examined invention by amending the claims to claim what the Examiner considers to be a separate invention. The applicant must file a divisional application to have non-elected inventions examined.
Use Claims
swiss claimsSwiss-type claims  of the form “Use of X in the preparation of a medication for the treatment of Z” are no longer acceptable unless the process for the preparation of the medicament is inventive per se). EPC 2000-style claims (X for use in/as Y) are, however, acceptable.
Extensions for late filing of responses
lateThe number of extensions available for each substantive Office Action during patent examination has been reduced to four months, and the total extensions for the entire examination should not exceed 12 months. This is 3 months less than the 15 months of Extensions that was formerly available. However, this period is only once substantive examination commences and does not include extensions of up to 6 months for responding to the Notice Prior to Examination.

Teva Challenges Gilead Patent Application for HIV Treatment

May 8, 2017

drug cocktailThis ruling relates to a treatment for HIV consisting of a single once-a-day dosage that includes a combination of two or three different active ingredients.

Israel Patent Application No. 169243 to Gilead is titled “PHARMACEUTICAL COMPOSITIONS FOR COMBINATION ANTIVIRAL THERAPY”. It is the national phase of PCT/US2004/000832 filed on 13 January 2004 and claiming priority from a couple of US provisional applications filed on 14 January 2003. Gilead purchased Triangle so that they would have the capability of producing both  FTC and TDF and in a press release in Bioworld in 2002 which quoted Gilead’s Chairman and CEO, they announced their intention to develop a single dosage formulation that included TDF and FTC, referring to the chemicals by their trade names of Viread and Coviracil. This announcement preceded the priority date and since they announced that they did not anticipate difficulties in formulating the combination, their announcement undermined claims 1 and 12 directed to the combination of TDF and FTC in the standard dosages of Viread and Coviracil. There were additional independent claims for FTC and TDF together with an additional active ingredient – either Reyataz, Kaltera or Sustiva. However, that combination was used in a clinical trial for treating Hepatitis B that was also prior art. This ruling addresses and clarifies the requirements for prior art to be anticipating and what is required to provide an inventive step. It also relates to the issues of claim support, enablement and utility.

History

GileadIsrael Patent Application No. 169243 to Gilead is titled “PHARMACEUTICAL COMPOSITIONS FOR COMBINATION ANTIVIRAL THERAPY”. It is the national phase of PCT/US2004/000832 filed on 13 January 2004 and claiming priority from a couple of US provisional applications filed on 14 January 2003. On allowance the Application published for opposition purposes and Teva filed an opposition on 26 March 2009 and four months later submitted a detailed statement of case. On 1 February 2010, the Applicant requested permission to correct the application, and on 21 April 2010, Teva requested that the proposed amendments to the claims be refused. There was an intermediate ruling on this by the Commissioner on 22 June 2010, and on 27 June 2010 Teva withdrew their challenge to the amendments and the opposition continued with the amended claim-set. On 8 May 2011, the Opposer submitted an amended statement of case and Gilad submitted their response on 1 January 2012. On 23 September 2012, the Opposer’s evidence was submitted in the form of two affidavits, by Professor Richard Novak and by Professor Joseph Fortunak. On 24 July 2013, Gilad submitted their response in the form of Affidavits by Professor Robert Redfield and Professor G Stahly, and on 10 April 2014 further affidavits were submitted in response to points raised. Read the rest of this entry »


Israel Patent Office Annual Report 2016

May 7, 2017

Flapping bidThe Israel Patent Office has published its annual report which now runs to an impressive 103 pages, albeit several of which are blank. Following the flying origami themes of previous years, the graphic illustration is a flapping bird. This is more challenging than the paper dart, but avid followers of these reports will have had more practice folding paper, and, indeed, those that print out the report will have more paper to fold.

According to the report last year there was a drop in patent filings into Israel, an increase in design filings, and an increase in trademark filings. However, due to the Madrid Protocol, there is an overall drop in routine filing and prosecution work from abroad for trademark attorneys.

There wass a general rise in the number of legal proceedings before the Israel Patent Office in all three categories, and the number of contentious issues are at their highest level since at least 2013.

Since the number of PCT patent filings exceeds the number of applications first filed in Israel, it is clear that the number of locally filed patent applications is not an accurate representation of the amount of locally generated work.

Perhaps the most interesting part of the document is the new section on patent office personnel.

STAFF

Perhaps not surprisingly, 93% of Israel Patent Office staff have academic degrees. Of these, 50% have masters’ degrees and 13.5% have PhDs. 59% of staff are women and 41% are men. We attribute this to the longer holidays and easier hours of the public sector. As a government agency, there is affirmative action to recruit those under-represented. Whilst 90% of staff are Jewish, 6.9% are Muslim, 1.6% are Christian and 0.5% are Druze.  In all 15 members of staff are from ethnic minorities, and a further 3 are Ethiopian and 1 employee is disabled.

78% of staff are between 31 and 50. However, only 7% are under 30, whereas 9% are over 70, with 5% being 71-80, 3% being 81-90 and 1% being over 90!

TRADEMARKS

Over the past decade, there is a slight drop in direct trademark filings and a rise in Madrid applications designating Israel. With 9308 trademark filings in total, 2016 was a worse year than 2015, but is fairly similar to 2013-2015, between than 2009 to 2012, but not yet back at 2007-2008 levels. However, these numbers are lower than would otherwise be, since from 2010 multi-class applications have been possible. Thus Israel is not less popular a destination, but there is less work for attorneys in the field, and 2016 certainly had fewer filings than 2015.

Of the marks filed in Israel, a steady 25% is by Israeli companies and about 75% are by foreign companies

There is a small increase in the number of Madrid international trademark applications by Israeli companies in 2016 (287) compared to last year (252).

PATENTS

As far as patents are concerned, there were 6425 applications filed in Israel in 2016, which is down on 2015 (6904), but better than 2013 and 2014 with 6184 and 6273 respectively. Looking at the past decade, there is certainly a drop in the number of incoming applications. Only some 804 applications of these are first filed in Israel, with 5621 coming in from abroad. Despite the number of Israel applications being the lowest in the past decade, the Official Report considers this stable, noting a drop in 8% in incoming filings.

The number of patents granted has been steadily increasing however.

The various fast track mechanisms are being used, with PPH being the most popular, followed by petitioning to make special and then green applications.

In general, the patent prosecution process is more efficient, with shorter queue times before first office action and between office actions.

There are more PCT applications filed in Israel than direct applications. This seems to indicate that despite the America Invents Act wiping out most of the advantages of first filing US provisional applications, and the reduced filing fee for private individuals, Israelis still prefer US provisionals. However, I seem to be filing PCT applications without priority claims more often and others may be doing so as well. Israelis are the most popular direct filers in Geneva.

PCT filings in Israel can elect Israel, US or Europe as the International Search Authority. Overwhelmingly, and with a steady increase each year since 2012 when it was introduced, Israelis are electing the Israel Patent Office. There has also been a steady increase in US Applicants that are electing to have their PCT applications examined in Israel.

DESIGNS

Designs are popular means for protecting car parts, extrusions, light fittings, and jewelry.  2016 saw 1866 design applications submitted in Israel, which is the highest number over the past decade. 67% of these are by Israeli applicants, so it seems that the noise regarding proposed new legislation has had some impact.


Israel Patent Lapses, But Patent Office Remiss For Not Sending Out Patent Certificate

April 30, 2017

The first renewal of IL 206744 to Bet El Zichron Yaakov Industries LTD was due within three months of it issuing. As it issued on 1 May 2016, the renewal was due on 1August 2016 (see Section 56 of the Israel Patent Law 1967), and six months later, on 2 February 2017, it was published as having lapsed (as per Section 57 of the Law).

On 9 March 2017, the Applicant requested reinstatement, but did not submit an Affidavit. At Deputy Commissioner Bracha’s request, the CEO of the company submitted an Affidavit claiming not to have received the Patent Certificate.

After reviewing the Israel Patent Office records, it transpired that due to a problem in the patent office, the Certifcate was indeed not sent out. The Deputy Commissioner considered this was sufficient reason for the renewal fee not being paid.

Since the request for reinstatement included the missing payment, the Deputy Commissioner ruled that the reinstatement should publish for Opposition purposes.


Greenlander

April 30, 2017

greenlander

Israel Trademark Application Number 274365 to Shandong  Longyue Rubber Co., Ltd.  for GREENLANDER is the national phase of Madrid Trademark Application No. 1245051

The Application covers tires for vehicle wheels; airplane tyre; repair outfits for inner tubes, tires solid for vehicle wheels; casings for pneumatic tires; automobile tires; vehicle seats; upholstery for vehicles; brake linings for vehicles; automobile chassis.

On allowance, this published for opposition purposes.

Jaguar Land Rover Limited filed an Opposition and the Israel Patent and Trademark Office sent a copy to WIPO.  Shandong  Longyue Rubber Co., Ltd did not respond so the mark is considered as abandoned.