Oppostion to Smartbike Trademark

September 17, 2017

268138El-Col Electronics (Nazareth Illit) Ltd submitted a trademark application for Israel Trademark No. 268138 in class 12.

The mark is a graphical image bearing the words Smart Bike as shown.

On 7 March 2017, an opposition was filed by Smartrike Marketing Ltd and Smart Trike MNF PTE LTd under section 24a of the Trademark Ordinance 1972, and Regulation 64a of the 1940 regulations.

On 30 April 2017, the Applicants requested an extension of time for submitting their Counter-Statement of Case in Response to the Oppositions. On 20 June 2017, the Applicant submitted their claims in accordance with Section 35 and requested that the Opposer deposit a bond for covering costs.

Section 38 of the Regulations provides the Opposer with a period that ended on 20 August 2017 to submit their evidence. In addition, the Opposer should have responded to the bond request within 20 days. However, until the time of writing this Decision, it appears that the Opposer chose not to submit evidence in an Opposition they themselves initiated. Nor did they respond to the request to deposit a bond.

Consequently, under Regulation 39, Smartrike is to be considered as having abandoned the Opposition:

If the Opposer does not submit evidence, he is considered as having abandoned the Opposition unless the Commissioner rules differently.

Since the Opposer did not submit  evidence and also failed to contact the court secretary, and since she saw no justification to rule differently, Adjudicator of IP, Ms Shoshani-Caspi ruled that the opposition be considered closed, and that Israel Trademark Application No. 268138 be immediately registered.

Based on the various considerations, she ruled that the Opposer should pay costs of 1000 Shekels + VAT within 14 days.

Opposition to Israel TM Application No. 268138, Ruling by Ms Shoshani Caspi, 28 August 2017


Changing of the Guard

July 11, 2017

changingThe various professional organizations representing the IP profession in Israel (LES, AIPPI and IPAA) cosponsored a reception to honour outgoing Commissioner Asa Kling and incoming commissioner Alon Ophir.

The event was held on Sunday in the Israel Yaffe conference center just North of Tel Aviv.

As an IP blogger, I felt obliged to attend and to write about the event. However, it was singularly non-memorable.

About 90 practitioners turned up, including some of the senior members of the profession that rarely patronize IP events. Other senior members were absent. This could, however, be due to vacations and the like.

dinosaurNachman Cohen-Zedek, as the last of the dinosaurs, spoke some words of introduction. I could not tell what he said, and nor could the other participants sitting in my area. The acoustics were poor and most of the speakers forgot to talk into the microphone. Asa used a projector to show a power-point presentation, however, it was out of focus and poorly illuminated, so apart from noting that the talk was illustrated with a steady increase in pink clouds with writing on them, I can’t actually report what he spoke about.

TOMERAs he is wont to do at various events, Dr Zebulum Tomer took the microphone, ostensibly to ask a question but in practice to give a little speech. He clearly believes that his one man crusade against poor pharmaceutical patents is a public service, which it is. However, those developing drugs are also serving a public interest. I don’t think anyone needed reminding that he is not an attorney but an industrialist. He reminds everyone at all events. The lawyers present generally look down on industrialists, and are certainly jealous of his competence in opposing patents which outshone that of anyone present.  The patent attorneys probably were a little jealous, still half wishing we actually made something instead of pushing paper.

Alon OphirThe person compering the event noted that Alon Ophir is the second commissioner named Ophir and that we will have to relate to him as Ophir the Second or some such to avoid confusion. This was a reference to former Commissioner Martin Oppenheimer who Hebracised his name to Michael Ophir. Commissioner Ophir seemed very young. He is a Kippa wearing practitioner which fueled speculation about whether his appointment reflected activism in Bayit Yehudi, the political party that the Minister of Justice represents. The press releases about Commissioner Ophir’s appointment mentioned how impressed the committee was regarding his vision. I was disappointed that he did not explain what his vision was. He noted that obviously outgoing Commisioner Kling did a great job, what does seem to be his focus is in decreasing pendencies and making the patent office ever more efficient. He expressed surprise and disappointment that more Israeli applicants were not first filing in Israel and accelerating examination to get an opinion before having to file abroad and applying the discount when filing PCT applications. He attributed the failure to ‘probably inertia’. Whilst accepting that some practitioners do use time-honoured strategies without consideration of changes, I don’t think this is the whole answer, and hope that the commissioner tries to listen and discuss with the profession instead of assuming that they are all lazy. I had to leave early as I had a ride with another attorney, who on leaving the hall early told me that we would be stuck in traffic. I suggested that perhaps we should go back in and leave later. He thought for a minute and said that he’d prefer to be stuck in traffic. I think this says it all.

With the attraction of introducing a new commissioner and thanking his predecessor, and with July being generally a quiet month, this was an opportunity to hold a stimulating event with the participation of some of the senior practitioners. The organizers chose to invite paid up members instead of reaching out to potential members, and did not consider how to make the event fun or intellectually stimulating. I think this is a shame and a lost opportunity.  It was however, correct and proper that an event happened.

I went on to a Bat Mitzva party. The 12 year-old girl celebrated by completing a tractate of the Talmud. it was the type of event where friends of the parents are Western immigrants with higher degrees and there were a number of patent attorneys present. One noted that his clients filed patent applications in Israel but did not want to speed up examination, and he thought that the changes in recent years whereby one cannot simply suspend examination indefinitely and cannot suspend at all without paying to do so, were commissioner efficiency drives that served no purpose. Readers in the know will not be surprised to learn that the practitioner was ex Fenster & Fenster. This approach, which enabled amending the spec and claims in light of infringers and deferring prosecution and allowance unless a patent was needed, was, though legal, nevertheless an abuse of the system. However, it does emphasize that practitioners are supposed to work the system for the benefit of their clients. Commissioners are supposed to ensure that the system works efficiently and such abuses don’t take place. We are on different sides of the fence.


Reviving an Inflatable Refrigerator…

July 6, 2017

renewIsrael Patent Number 190365 to Abraham Klanss titled “Inflatable Refrigerator and Freezer” lapsed due to failure to pay the second renewal. The Application was submitted on 23 March 2008, and so the deadline for paying the second renewal for years 6-10 was 23 March 2014.

When both the deadline for paying the renewal and the six month grace period passed, the Application was considered lapsed and a notification to that effect published in the November 2014 Israel Patent Office Journal.

From the Affidavit submitted with a request to reinstate the Application it transpired that Applicant had transferred the issue to Advocate Dror Matityahu, but the address of record in the Israel Patent Office was that of Patent Attorney Yoram Tzavyon.

From correspondence between Advocate Dror Matityahu and Patent Attorney Yoram Tzavyon it appears that the Advocate had paid the fee, despite the previous arrangement being that Tzavyon would handle the renewal.

The Applicant received no updates from his lawyer. In January 2017, after trying in vain to contact the lawyer, the Applicant received a status update from the Israel Patent Office and learned that the patent had lapsed.  The first attempt at reinstatement was submitted on paper in April. The current regulations require such requests to be submitted electronically and this happened the following month.

The circumstances described above are extreme. If Attorney Matityahu did indeed pay the renewal fee, he certainly did not send proof of payment to the patent office so the renewal was not registered in a timely manner. The Applicant for restoration has affirmed that he is unable to make contact with his lawyer so cannot clarify if the renewal was indeed paid as stated.

Section 60 provides for restoration if a request to restore a patent is submitted in a timely manner. The time that had passed since learning of the problem in January and first attempting to reinstate in April was considered by the Deputy Commissioner as being just about timely, it being noted that all the information was available from the database published on Israel Patent Office website, without requiring contacting the secretariat. The Applicant stated that he did not want the patent to become abandoned.

All things considered, despite the doubt, the Applicant can be considered as having fulfilled the requirements of Section 60 and so the Application for reinstatement is published for Opposition purposes provided the missing Renewal is paid.

Decision by Deputy Commissioner Bracha re Reinstatement of Israel Patent IL 19035, 26 January 2017.


Isscar Opposes Hanita Patent for Milling Tool

June 15, 2017

Hanita Metal Factory ltd. applied for Israel Patent Application No. 177336 and, on allowance, it published for opposition purposes. Isscar opposed the patent issuing.  The applicant requested to amend the specification and neither Isscar, nor the public opposed, so the opposition concerns the amended specification.

The parties submitted their statements of case and evidence and then a hearing was held on 10 January 2017. The parties then submitted summaries and the Opposer filed their response to the summary.

The Application in question is titled “Chatter resistant end mill” and has one independent claim with seven dependent claims. The independent Claim 1 of the Application is as follows:

“A chatter-resistant end mill or shell mill or burr, comprising a shank portion and at least one cutting portion divided into a plurality of teeth by flutes disposed between said teeth, each tooth having at least one cutting edge,
Wherein a first angle separating said cutting edge of a first tooth from the cutting edge of a second tooth adjacent to said first tooth in a first direction is different from a second angle separating second cutting edge of said first tooth from the cutting edge of a third tooth adjacent to said first tooth in a second direction opposite the first direction,
Wherein a third angle separating the cutting edge of said second tooth from the cutting edge of a fourth tooth adjacent to said second tooth in said first direction is equal to an equal spacing angle defined by a value of 360 degrees divided by the number of said plurality of teeth,
Wherein one flute of the flutes is disposed between two adjacent teeth which are spaced apart at an angle exceeding said equal spacing angle, the one flute being wider and deeper than another one of the flutes.”

Thus the claimed invention includes a shank portion, a cutting portion, flutes, a tooth, a cutting edge, and various spaced apart cutting elements having angles defined in the dependent claims which are fairly clear when read together with the figures shown below.

Milling toolThe basis of the Opposition was various patents, catalogues and Russian metalworking standards. The claims were considered as claiming more than the disclosure deserved and that they were insufficiently supported. The Opposers also claimed that the effective date of the Application should be post-dated to the date of the claim amendment and then the claims could be disqualified by the Applicant’s own prior art.

The cutting tools claimed were carbides and the Russian standards were for Stainless steel cutting tools. The Applicant considered the standards were therefore irrelevant.

RULING

The burden of proof in patent opposition procedures is initially on the Applicant, see 665/84 Sanofi vs. Unipharm ltd. and 645-06-13 Unipharm vs. lilly Icos 25 January 2014. The Opposer does have to bring evidence to support their challenge (see Il 143977 Astra Zeneca vs. Unipharm, but then the Applicant has to prove that the claims are patentable.

In this instance, the grounds of the Opposition are lack of novelty, lack of inventive step, and insufficient disclosure as required by Sections 4, 5 and 13 respectively.

Novelty

Section 4 defines the novelty requirement as follows.

  1. An invention is deemed new if it was not published, in Israel or abroad, before the application date—
    (1) by written, visual, audible or any other description, in a manner that enables a skilled person to make it according to the particulars of the description;
    (2) by exploitation or exhibition, in a manner that enables a skilled person to make it according to the particulars thus made known.

To cancel the Novelty of an Application a single piece of prior art has to fully describe the elements of the invention in a manner that enables persons of the art to make the invention. See Appeal 345/87 Hughes Aircraft vs. State of Israel p. d. 44(4) 45 (page 105 of the ruling).

The first rule is that to prove novelty destroying prior publication one has to identify a single document that describes the invention in its entirely and it is not sufficient to create a mosaic of different documents to create a general picture.

Hughes also states that:

A general description is insufficient to remove novelty if it is not enabling and does not provide enough signposts leading to the invention of the patent.

The requirement for showing the invention is explained in Appeal 4867/92 Sanitovsky vs. Tams ltd et al, p.d. 50(2), 509:

On one hand, the defense of a patent includes not just that described in the claims, but also the core of the invention [MF – what the British case-law refers to as the pith and marrow in a somewhat odd mixed metaphor] (section 49). On the other hand one can claim a lack of novelty when accused of infringement (section 4) not just when a piece of prior art describes all the elements of the invention, but also then the prior discloses the core of the invention.

The essence of the invention is that part that is central and essential to the workings of the invention in contradistinction to elements that can be substituted for or left out entirely. the main core will remain protected even if an essential element is switched for another that performs the identical function. 
Page 515-516.

See also See also Appeal 793/86 Michael Porat. vs. Z.M.L. Modern Medical Equipment, p.d. 44(4); 578 pages 583-584.

The Opposer considers that the claimed elements are described in the prior art. A brief summary of the art cited by the Opposers follow’s.

F10 is a “Drilling Groove Milling Cutter” that relates to a four-edged drilling groove milling cutter having end and peripheral cutting edges.”

F13 is titled “Roughing and Finishing Rotary Tool Apparatus and Method” and is described as follows:

“The rotary cutting tool of the present invention employs roughing and finishing blades on the same tool to produce roughing and finishing cuts in one cutting operation. The rotary cutting tool preferably has a roughing flute adjacent to each roughing blade and a finishing flute adjacent to each finishing blade. In highly preferred embodiments, the finishing flutes are smaller than the roughing flutes… The flutes are therefore preferably unequally spaced. In some highly preferred embodiments, the blades are unequally circumferentially spaced and are immediately behind the flutes. At least one finishing blade preferably extends radially farther than at least one roughing blade.”

Witness for the Applicant, Mr Hina admitted that element j of the application is mentioned in both F10 and F13:

Commissioner: … to the best of my understanding, we have just asked a very simple question, does F10  as translated into English in F10A show the 360 degree divided into sections, yes or no? If so, please refer to where it shown in this publication.

Mr Hina responded No.

Patent Attorney Luzzatto : you write that element j is not found in F13, correct?

Mr Hina: I repeat there is something not defined in the indices.

The test explained in Hughes Aircraft requires one publication to teach all elements. Since this is not the case, the claimed invention is novel.

Inventive Step

The second grounds for cancellation was a lack of inventive step contrary to Section 5 which states:

An inventive step is a step which does not, to an average skilled person, appear obvious in the light of information published before the application date in ways said in section 4.

Unlike Novelty which requires a single document to teach an invention, an Inventive Step can be disqualified by a number of citations that provide a picture of what was known at the Application date:

The basic question of inventive step is determined by considering the total professional knowledge in the relevant field, and to do so it is legitimate to join different publications into a general picture Appeal 3314/77 [1] page 209. However, one must always bear in mind that the joining together of the disparate documents must be obvious to persons of the art at the date in question; for if it requires an inventiveness to do so, particularly where scattered crumbs of knowledge are gathered together – the general picture obtained is not obvious and one cannot say that the patent has no inventive step.” –page 111.

See also Sanitovsky pages 515-516 and Appeal 793/86 Michael Porat vs. Tzamal Modern Medical Equipment, p.d. 44(4) 578, 585.

Thus unlike novelty where a single document is required to teach an invention, as far as Inventive Step is concerned, one can combine disparate documents so long as it would have been obvious to an average person of the art to do so.

Appeal 47/87 Hasam Reliable Defense Systems vs. Abraham Bahri, p.d. 45(5) 194 states that to show a lack of inventive step, one may cobble together different pieces of prior art.

The question of inventive step is determined by comparison to professional knowledge in the relevant field by combining disparate references without forgetting that their combination has to, itself, be obvious, so that if it requires an inventive step to combine the publications, particularly where disparate elements are collected from all over the place, the picture is not obvious and one cannot state that the invention lacks an inventive step. 

Thus one has to consider whether persons of the art would have a motivation to combine the publications at the relevant date. See Opposition to IL 138347 Sarin Technologies ltd. vs. Ugi Technologies, 14 January 2008.

The US case-law developed a thumb rule for inventive step by combining publications or known elements under which one has to consider the teaching, suggestion or motivation to make the combination (see Section 51 of the ruling).

Further on (paragraph 51):

The Board of Appeals of the European Patent Office takes an approach known as the “could/would approach” to consider if a combination includes an inventive step. A combination of known elements is not considered obvious merely because a person of the art could have combined them, unless he would have been motivated to combine them to achieve some advantage.

Mr Bulhov testified that when designing a new tool bit, persons of the art deal with two issues” judder and removal of the scrap. There is no dispute that cutting tools with different angles were known and that the angle separation could provide stability. Mr Bulhov testified admitted that prior to the filing date, milling at two different angles was known.

The first piece of prior art cited, which was a catalogue from 2003, shows that Applicants were marketing a four angled milling bit, where two of the angles were different.  The accompanying text stated “Chatter-free machining, avoids resonance vibration due to patent pending flute form design and constant, unequal flute spacing.”

Publications F18 and F19 are Russian standards titled “End Mills with Cylindrical Shank” and ” End Mills with Tapered Shank” respectively.

The Commissioner rejects Applicant’s claim that the standards merely recommend the invention but do not require it, since that is not sufficient to make the invention non-obvious, and establishes that the relevant features were known in the art. See Opposition to IL 166626 Teva Pharmaceuticals vs. Astra Zeneca LTD, 11 March 2017. https://blog.ipfactor.co.il/2017/04/20/patent-to-astrazeneca-successfully-opposed-by-teva/

F18 and F19 are Russian language documents that are difficult to date, but the most recent versions are 1996 which was 10 years before the filing date of the present invention. Although in Russian, the documents are directed to tool makers and are prior art in all respects Page 21 of F18 and page 4 of F18 states that “Mills shall be manufactured with non-uniform circumferential tooth pitch as shown in Fig. 3 and Table 3.”

Specific cutting angles are given for the various grooves.

The Applicant argues that since these specifications relate to high-speed steels and not carbides, they are not relevant. The Applicant considers that judder in carbides is a more serious problem. The Commissioner considers that the Applicant’s claim is weak as the claims and indeed the specification are not limited to carbides or indeed, to other specific materials. The Applicant has not explained why the choice of cutting tool material would lead to the assumption that the angles are different and the publications themselves, though directed to HSS do not teach away from other materials.

Thus element J is taught by F18 and F19 and persons of the art could be expected to combine this with other elements to reduce judder.

Publication F10

Publication 10 teaches a milling tool with two pairs of flutes, such that each pair of flutes has the same angle.  The Applicant alleges that this teaches against having three separate angles as claimed, and thus F10 cannot be combined with F18 and F19 and does not teach the claimed invention.

It appears that the invention described in F10 combines two properties: the cutting surfaces are of different lengths and the angles of the flutes. The invention claimed in F10 directs persons of the art to combine wide flutes with long cutting surfaces:

“Therefore, according to the invention, larger chip spaces are provided for the long cutting edges having the unfavorable chips than for the short cutting edges having the favorable chips… By the interaction of the two features, the invention provides the possibility of optimum coordination of cutting edge length and chip space on the drilling groove milling cutter.”

The large scraps created by the large cutting edges require large flutes. Thus flutes 10 and 11 in Figures 2 and 3 of F10 are larger than flute 12 and 13. Thus F10 teaches the additional element claimed:

“On account of their width, the chips produced by the main drilling cutting edges require larger chip grooves than the chips of the intermediate drilling cutting edges. For this reason, the pitches 10, 11, located in each case in front of the rake faces of the main drilling cutting edges, as far as the next intermediate drilling cutting edge are configured to be greater than the pitches 12, 13 in front of the rake faces of the intermediate drilling cutting edges.”

F133

A publication is considered as being prior art that may be combined with other publications if a person of the art would consider it obvious to do so. Citing R. Carl Moy, “Moy’s Walker on Patents”, 4th ed. 2009, p. 9-48 – 9-50 the Commissioner concludes that where the publications are trade publications in the field of interest one can assume that persons of the art would know about them, and the publication in question relates to milling tools with different sized flutes to minimize judder.

In light of the above, the Commissioner considers that the principles of reducing judder by different width flutes are known and together with F19 and F19, 4 and 5 fluted milling tools are known.

Furthermore, the dependent claims lack inventive step. These relate to difference cutting edge angles along the shank. Such variations are described in F13 and F13a and are referred to as unequal flute spacing. Thus the dependent claims are also not patentable. Claims 2and 4 claim standard ranges for the angles. Claim 4 claims different dimensions as described in F10 and claims 5 and 7 describe variations taught in F13 and F1a. Claim 8 relates to standard cutting edges.

Thus the Application lacks inventive step.

Adequate Disclosure

Section 13a of the Law states that:

the specifications shall end with a claim or claims that define the invention, on condition that each said claim reasonably arise out of the subject described in the specification.

This means that the claims define the scope of protection sought. The claims should be interpreted with respect to the specification taken as a whole, including the text and drawings. See Hughes 65.

In Appeal 8802/06 Unipharm vs. Smithkline Beecham from 18 May 2011 it is stated: that:

In accordance with Section 13 of the Patent Law, the protection of the invention is determined by the claims that define the invention, and not be the specification as understood in Section 12, which includes the title and description (see Hughes p. 68); however one can refer to the specification to explain the nature claims  (see Appeal 2972/95 Yosef Wolf and Partners, ltd. vs Beeri Press Limited Partnership,

A ‘Greedy’ claim is one that attempts to protect more than it discloses. The extent that this term can be used with reference to the requirements of Section 13(a) is given in Appeal 1008/58 American Cyanamid vs. Lepitit et al. page 261 from 4 April 1960. See also Opposition by Teva to IL 142809 to Pharmacia AB from 26 February 2015. .

The Opposer claims that claim 1 is greedy in that it has much wider scope than is supported by the specification. The Applicant disputes this and argues that following the voluntary amendment, flute B is defined as the longest and deepest flute:

“Wherein one flute of the flutes is disposed between two adjacent teeth which are spaced apart at an angle exceeding said equal spacing angle, the one flute being wider and deeper than another one of the flutes.”

Page 8 does state that flute B is deeper and wider than flute A

“The flute 32 relating to angle B is wider and deeper than the flute 34 relating to angle A, so as to improve coolant feed and facilitate chip clearance and removal when teeth work with higher feed per teeth compared to equal tooth space dividing (by angle A).”

The specification provides that the angle of flute B is large than the angle of flute A. Amended claim 1 requires that the angle of flute B is the largest angle. This is not supported in the specification which only compares flute B with flute A. So amended claim 1 is not fairly supported by the specification.

Conclusion

Claim 1 is not-inventive and also is not adequately supported. The Opposition is accepted and IL 177336 is rejected. Costs may be claimed in accordance with circular MN 80.

COMMENT

I accept that the claims encompass combinations of known elements to create a cutting tool that is new.  I also accept that unless one limits oneself to a specific tool design, the claims will always be wider than that demonstrated. My problem is that the type of features described are functional rather than aesthetic. At present, Israel design examiners consider functional features as non-patentable. We could even extend this and consider such cutting tool elements as replaceables and use public policy to restrict protection.  If, however, we wish to encourage research and development of better performing cutting tools, we should provide some sort of protection for them to prevent immediate copying. Israel does not have a petty patent system or protection for purely functional design. It seems to me, therefore, that combining elements from different publications for tool bits to create a novel bit, should be patentable. We could limit the protection to combinations described and maybe the claims are overly wide. Perhaps what is missing here is dependent claims for specific tried and tested drill bits.

By training, I am a materials scientist and engineer. My PhD research was in hard metals and coatings. I did not study milling and though I understand the purpose of the various elements, I am inclined to agree with the Commmissioner that there is a rebuttable assumption that a design element known for a HSS tool would not be appropriate for a carbide tool. However, carbides are much harder and hence more brittle. Optimizing a new tool is not intuitive and probably is the result of much experimentation, but I don’t know if the combination has an inventive step. Shamgar’s guidelines in Hughes Aircraft are fine and dandy, but one really needs experts on cutting and milling to determine whether the combination of known elements in a new product of this type does or does not include an inventive step.


Dilution of a Beverage Mark?

June 14, 2017

267280CT Miami LLC applied to register Israel Trademark Application No. 267280 in classes 9 and 38. The mark in question  is shown alongside.

On 1o May 2016, the mark was allowed and it published for opposition purposes on 31 May 2016. Perhaps not surprisingly,  Blu Israel Drinks ltd opposed the mark under Section 24a of the Trademark Ordinance 1972 and Section 35 of the Trademark Regulations 1940.

blu(Blu Israel drinks makes an energy boosting caffeine supplement drink).

On 9 October 2016, the Applicants requested an extension of time until 9 December 2016, for submitting their Counter-Statement of Claims, but did not actually submit a Counter Statement of Claims by then, or indeed prior to this decision issuing.

In these circumstances, the Applicant may be considered as having abandoned their mark and thus  Adjudicator Ms Shoshani Caspi ruled that the file be closed. Furthermore, applying her discretionary authority under section 69, she ruled reasonable damages for having to manage the Opposition. After weighing up the different considerations, she ruled  that the Applicants should pay 3500 Shekels exc. VAT within 14 days.


Patent Application for Poultry Processing System Refused By Examiner is allowed by Deputy Commissioner

June 9, 2017

One of the nice things about the Israel patent system is that the Applicant has the right to appeal Examiner’s claim rejections to the Commissioner. The process is rather smoother, cheaper and faster than Appeals in Europe and the US.

Israel Patent Application Number IL 190482 to Ecolab Inc titled “SYSTEM AND METHOD FOR ON-SITE RECLAMATION, RECONDITIONING AND REAPPLICATION OF POULTRY PROCESSING WATER” is the national stage entry of a PCT application US/2006/038333 submitted in October 2006.

poultry processingThe invention relates to recycling water used for processing poultry and reusing for the same purpose. The first office action of 14 January 2013 found the Application non-patentable due to it lacking an inventive step over US 2005/0016934. The Applicant requested allowance under section 17c, based on the corresponding Australian issued patent no. AU 2006303885 that had issued in 2011. However the Examiner considered that the Applicant should deal substantively with the obviousness objection before the patent could be allowed.

On 8 December 2016, after five rounds of claim amendments, the Examiner finally refused the application under regulation 45 of the Patent Regulations 1968.

In the meantime, the corresponding Canadian patent, CA 2618436 issued with virtually identical claims. However the US patent application was refused, as was an Appeal to the PTAB, due to US 6,182,833 to Zittel, US 6,802,984 to Perkins and US 5,470,472 to Baird, none of which were cited in Israel.

The main claim is as follows:

“1. A treatment system for on-site reclamation, reconditioning, and re-use of poultry processing water, wherein said treatment system is connectable to a washing system, said treatment system comprising:
(a) an inlet line connected to a first receptacle within the washing system forcollecting said processing water leaving said washing system;
(b) a rotary filter, said filter retains solids greater than 0.001 to 0.010 inches, wherein the inlet line is connected to the rotary filter for filtering debris from the processing water collected in said first receptacle;
(c) a channel for removing said debris filtered from said rotary filter;
(d) a dispenser comprising equipment for preparing an antimicrobial solution, and a plurality of spray nozzles positioned proximate to said filter;
(e) a second receptacle for collecting water and antimicrobial solution from the rotary filter and from the dispenser, said second receptacle having a fluid capacity of 100 to 2000 gallons;
(f) piping for circulating said processing water through said washing system and said treatment system and for returning said processing water to said washing system; and,(g) a plurality of air operated diaphragm pumps for circulating the processing water through said piping;
wherein said dispenser is configured for dispensing antimicrobial solution and water onto said filter, and wherein the treatment system comprises only one disinfecting mechanism consisting of the dispenser as a source of antimicrobial solution and the rotary filter and second receptacle as receptacles of antimicrobial solution.”

The Examiner’s decision to reject the Application was based on the following reasons:

  • The application lacks inventive step over US 2005/0016934;
  • The Applicant failed to explain why the invention was an improvement over the prior art, especially US 2005/0016934, and did not provide data showing that it was more efficient. Consequently, the Examiner considered that adding the anti-microbial solution during or after filtering were equivalent and the differences were well understood to persons of the art.
  • Since over US 2005/0016934 shows a rotating filter with sprinklers, there is no technical problem to add ozone to the filter in addition to or instead of the oxidation described in over US 2005/0016934.

The Applicant responded by offering to add a further element to claim 1, thereby narrowing the scope of the patent and providing an inventive step.

The additional narrowing feature is as follows:

“(d) a dispenser comprising equipment for preparing an antimicrobial solution, and a plurality of spray nozzles positioned proximate to said filter, said dispenser spray nozzles configured for dispensing antimicrobial solution continuously onto the filter for 10-60 seconds every 5 minutes to 5 hours; ”

The Applicant similarly applied to amend independent claim 9 as follows:

“(e) dispensing an antimicrobial solution and water onto said filtering apparatus by means of dispenser comprising a plurality of spray nozzles positioned proximate to said rotary filter by spraying water onto said filtering apparatus for between 10 to 60 seconds every 5 minutes to 5 hours at a force of between 0.6 to 6 pounds-force when measured from 12 inches away from said filtering apparatus and constantly spraying said water at a force of between 0.1 to 0.5 pounds-force when measured from 12 inches away from said filtering apparatus, thereby removing the retained solids from said filter thus forming a waste stream and removing bacteria from reclaimed water;”

The Deputy Commissioner Ms Jacqueline Bracha considered this sixth claim amendment in a hearing on 24 April 2017.

Discussion

The claimed invention was considered novel, so the Examiner concentrated on inventive step over US 2005/0016934 as required by Section 5 of the Law.

Section 5 states:

Inventive Step is an improvement that is not considered self-evident to persons of the art based on publications preceding the Application date as per section 4.

Different approaches for determining inventive step are given in the ruling concerning IL 219732 to Celgene Corporation. According to both the US and the British approaches, one has to identify the prior art available to persons of the art, to identify the differences and to determine whether there is an inventive step that wasn’t known to persons of the art at the relevant date.

In 345/87  Hughes Aircraft Company vs. State f Israel p.d. 44(4) 45 (1990) paragraph 49 it was established that the inventive step does not need to be big.

The prior art relied upon by the Examiner is US 2005/0016934 which describes a system for recycling water after processing poultry by treating the used water to remove solids, fats, oils, and pathogens for reuse of the water in further poultry treatment.

The common elements are: two receptacles for collecting the water, one of which is for collecting the water after use in the washing system; sprinklers, filters for filtering waste from the water after use; a pipe for removing waste, a pump for circulating the water through the system, and a diaphragm pump operating on compressed air to cause the water flow.

There are, however, differences between the cited art and the claimed invention. The filter in the claimed invention rotates and is situated after the first receptacle, whereas that in the system described in US 2005/0016934 is upstream of the first receptacle so that the water is filtered before the anti-microbial solution is added.

The addition of the anti-microbial solution in the claimed invention is by sprinkling onto the rotating filter at an earlier stage that in the cited art wherein the anti-microbial solution is added after two filtration stages. Furthermore, in the system of the application, the anti-microbial solution is added in one stage, in the filter, so there is one disinfectant stage that occurs concurrently with the filtering. In contradistinction, in the cited art, there are two disinfectant stages, where ozone is first used, and then chlorine is added (see [0027] and [0030]. Introducing ozone into the system requires a second stage wherein the ozone acts on water in the receptacle to kill microorganisms in the water. The addition of chlorine is actually optional and it is introduced at different stages not detailed in US 2005/0016934.

The claimed invention includes a dividing system with sprinklers that includes equipment for preparing the antimicrobial solution and sprinklers for its introduction into the filters such that water without the antimicrobial material is continuously sprinkled whereas the water with the antimicrobial material is intermittently added as per the claims. In US 2005/0016934 the water flows continuously.

The Applicant claims that the differences between the claimed invention and the prior art are sufficient to provide an inventive step, since the early addition of the antimicrobial solution enables it to act continuously without needing to wait. Furthermore, in the claimed invention the filtering and sterilizing are combined, whereas in the cited art, the washing of the filter is only intended to remove waste.

The Applicant argued that the long period in which the antimicrobial solution is in the system allows a weaker antimicrobial system than that required in the cited art.

RULING

The Deputy Commissioner considers that the differences between the cited art and the claimed invention require persons of the art to apply an inventive step. At least the Examiner failed to cite similar features found in related systems that are required to substantiate the allegation of lack of inventive step.

The Deputy Commissioner disagrees with one allegation of the Examiner; that the Applicant failed to explain the advantages of the claimed invention over the prior art. The Deputy Commissioner does not consider that the Applicant has to provide external evidence that the invention is superior to the prior art. The advantageous feature(s) have to appear in the specification at the time of filing so that the Applicant does not invent during Examination. Furthermore, a different system that is not necessarily superior, but which operates in a different manner may be patentable, if the differences are not obvious to persons of the art.

In light of the above, IL 190482 is allowed for publication for third-party opposition.

COMMENT

The Deputy Commissioner notes that the Israel Law refers to an inventive step and then explains that a non-obvious difference that is not necessarily advantageous is all that is required.

To my mind, the US law requires the claimed invention to be non-obvious, whereas the UK and EP approach requires an inventive step. The wherein clause in the US points out a non-obvious feature, and the characterized by clause in Europe points to an inventive step. The two requirements are not the same.

That as may be, the US board of appeal rejected the invention in light of specific art. I think that for purposes of efficiency, the Deputy Commissioner should have referred the application back to the Examiner to consider that art in light with Israel law since one assumes that oppositions or cancellation proceedings will raise the issues found persuasive in the US. Then again, perhaps it is better for the Commissioner or a judge to consider such issues.


Extension of Israel Patent Extended

June 8, 2017

BSSIsrael Patent No. 164987 to Bristol-Myers  Squibb is titled ” PROLINE DERIVATIVES AND  PHARMACEUTICAL COMPOSITIONS CONTAINING THE SAME”. On 9 January 2017, the relevant Examiner calculated that the patent was entitled to a 479 day extension. The patentee has appealed this calculation.

The patentee’s representative submitted his calculation and a hearing was held on 28 May 2017. Following the hearing, the Deputy Commissioner accepted the arguments and ruled that the extension should be 679 days.

SunvepraThe patent term extension is for the active ingredient of Sunvepra which is asunaprevir. The Application for a patent term extension was under section 64(o) of the Israel Patent Law. The Applicant notes that the drug is not marketed in any of the relevant States as per section 64(a) and so the period of protection should be calculated on the basis of Section 64(i)(b) as follows:

If the registration is only requested in Israel, the patent term extension will be in force for a period equivalent to that from when the request for registration was submitted to when approval occurred, so long as the Applicant acted equitably and with appropriate efficiency.

The disagreement between the Examiner and the Applicant concerns the proper interpretation of the term approval as used to indicate the period of the extension. There is consensus that this period starts with the submission for regulatory approval, but the end of this period is disputed. The Examiner considered that this period terminates with the registration of the medication in the register of medical formulations as per section 47a of the Pharmaceutical Ordinance 1981. The patentee contends that the date should be the date on which approval for sale of the drug occurs.

In accordance with Section 64a of the Law, the term approval is defined in section (b)1 of the Law in the same manner as in section 54a as follows:

In this Section, ‘approval’ is authorization or permission or other document needed to sell the product.

The Legislative was aware of the difference between the term רישוי meaning approval and רישום meaning registration. The term רישום (registration) is used in sections 64(d)2 and 64(d)3. The meaning of the term רישום (registration) is registration in the Register of Medical Formulations under section 47a of the the Pharmaceutical Ordinance.

The term רישוי (approval) used by the legislative for calculating patent term extensions is wider and includes all approvals needed to market the product. Where the product is a medical device there is no disagreement that after registration in the register there are other approvals necessary before a product can be marketed to the public. These approvals are listed in regulations 14-18 of the Regulations or Pharmacists (formulations) 1986 and we are concerned with the first of these in regulation 14:

No one may market a formulation for the first time in Israel unless it is from a batch that receives marketing approval from the manager.

The Examiner himself was aware that to marketing approval was required in addition to registration as is clear from his letter of 6 September 2016. There is no doubt that this marketing approval was only signed on 4 September 2016 as is clear from the appendix to the Affidavit of Ms Talya Ben-David, Brostol-Myer Squibb’s regulatory manager in Israel. So although the formulation was registered from 18 February 2016, it was only approved for marketing some 200 days later.

The Applicant’s understanding of the Law is ‘technical’. As is clear from the Appeal to the Jerusalem District Court 223/09 Lundbeck vs. Unipharm (25 May 2009) regarding understanding terminology of the Law:

One can therefore say that the substantive scope of considerations that the Commissioner may use when determining the period of protection is different from that when considering a patent application. Deciding whether an invention is patentable is by nature discretionary in that it requires ascertaining novelty, inventiveness, utility, etc. In contradistinction, when determining the appropriate patent term extension, the Commissioner is limited to considering the formal requirements of the Law, without consideration of the way the invention works or the Applicant’s investment in inventing, developing and registering. This is what the legislative body decided was the appropriate way to balance the conflicting interests when providing patent term extensions. The burden on the Commissioner is technical and is designed to be objective.

It so happens that this technical calculation also corresponds to the purpose of the Law which is to compensate the Applicant for regulatory delays whilst enabling competitors to test and develop their generic equivalents without infringing the patent.

Section 54a of the Law, legislated as an amendment to the 1967 Law, cancels the de facto extension of products requiring approval (particularly drugs), by enabling generic competitors to prepare for and obtain regulatory approval whilst the patent is in force and to launch their products immediately on the patent lapsing. In compensation for this change, the patentees were allowed to obtain patent term extensions. The extension is not for the whole patent but only prevents manufacturing and sale of the medical formulation that includes the material covered by the patent (Section 64(h)d of the Law). Just as the de facto extension for regulatory approval is needed to market the drugs, so the compensation for the drug developers, by enabling patent term extensions, is tied to approvals. The patent term extension is needed to compensate the patentees for “the period that has passed until the patentee receives approval from the Israel Office”. See also the words of explanation for the fourth amendment to the Patent Law (use and patent term extension) 1997, Draft Law 2664 page 146 onwards.

Although the Israel Law is not identical to the arrangements reached in the US and in Europe, it seems that there also, the patent term extension is calculated from the time that all approvals are received. See for example Section 14 of the Medical REGULATION (EC) No 469/2009 OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL   concerning the supplementary protection certificate for medicinal products of 6 May 2009:

“The certificate shall take effect at the end of the lawful term of the basic patent for a period equal to the period which elapsed between the date on which the application for a basic patent was lodged and the date of the first authorisation to place the product on the market in the Community, reduced by a period of five years.”

See also 35 USC 156 which deals with determining the “regulatory review period for the approved product” and also the words of explanation for the 13th amendment of the Patent Law 2012:

“The approval of the extension period for patents for medical formulations and medical devices of the type given in the US (Patent Term Extensions PTE) under Section 156 of Volume 35 of the US Code. This approval extends the US patent for delays in obtaining regulatory approval for marketing medical formulations and medical devices that occur after the patent issues, and half of the period for clinical trials for the same medical formulations and medical devices, with deductions from this period for tardiness by the patentee in obtaining such regulatory approval. The period of the Approval given in the US under the US Law cannot exceed five years and cannot extend beyond fourteen years from the first marketing approval of that medical formulation or medical device.

However, reference to foreign laws is not required since the term ‘approval’ in Section 64(i)2 is clear and unambiguous:.

The proceeding for considering the request for a patent term extension

extension

Section 64(o)b provides a very short period for examining requests for patent term extensions. This short period obligates fast examination and does not allow back and forth exchanges between the Examiner and the Applicant.

The examination of the patent term extension request commenced on 6 September 2016. In an Office Action the Examiner explained that the Application did not accord with Section 64(d)(3) of the Law since at the time of the Application, there was no regulatory approval in Israel, so he considered that the registration did not allow the formulation to be legally marketed.

The Applicant challenged this ruling before the Commissioner but this before this was substantively considered, an Affidavit was submitted that showed that marketing approval was given on 4 September 2016 and so the Commissioner ordered the request to be examined.

On 8 January 2017 the Examiner informed the Applicant that the Commissioner was willing to give a 783 day extension, and gave him a month to relate to this. The method of calculation was not detailed.

calculationThe following day, on 9 January 2017, the Applicant requested details of this calculation and established telephone contact with the Examiner. The contents of the conversation were not documented but the Applicant’s representative explained the main points discussed. [why the Examiner wasn’t interviewed is not discussed]. In the discussion, it was noted that an error had occurred in calculating the extension period which did not conform with either the Applicant’s or the Examiner’s interpretation of the Law. The Examiner considered that the extension period should be from when regulatory approval was requested until registration of the product. Consequently, that day, 9 January 2017, the Examiner issued a letter correcting the 783 days to 479 days, commencing on 27 October 2014, when regulatory approval was sought, and ending on 18 February 2016 when registration occurred. Due to an error, the Applicant was not given a month to appeal this decision. Instead, it was published in the January 2017 patent journal. Thus on 31 January 2017, a notice that an extension would be given under Section 64(e)c of the Law, despite the Applicant appealing the decision on 22 January 2017. It is emphasized that Section 64(e)c of the Law allows the Commissioner to publish the announcement within 60 days, thereby allowing the Applicant to appeal the examiner’s decision prior to it publishing, which is his right under section 161 of the Law.

There is no doubt that the publication is an error that should be corrected under Section 170 of the Law. The error is twofold: Firstly, it should not have published before the Applicants appeal was heard. Secondly, the publication did not accord with Section 64(i)b of the Law, as clarified in this ruling.

Therefore, a new announcement will publish in the June 2017 journal to the effect that the patent term extension is 679 days. Under section 170(c) the public may oppose this correction.

Ruling by Deputy Commissioner Bracha regarding Patent Term Extension to IL 164987.

COMMENT

I found this ruling convincing and concur that it seems to fit with the intent of the Law and not just with its literal wording. However, the corrected calculation may be opposed both substantively based on alternative interpretations and also due to third parties relying on the shortened term. We await further developments.