Unipharm Successfully Opposes Novartis Patent for Panobinostat Lactate Salts

March 26, 2017

PanobinostatThis ruling relates to an opposition against a patent application by Novartis for Panobinostat  which is a hydroxamic acid  that acts as a non-selective histone deacetylase inhibitor (pan-HDAC inhibitor).  On 23 February 2015 the drug received FDA accelerated approval for use in patients with multiple malignancies, and on 28 August 2015 it was approved by the European Medicines Agency for the same use.

The Opposer claimed that the drug was described in the Applicant’s earlier published PCT application and was thus both anticipated (known) and obvious. The Commissioner rejected the anticipation claim but accepted that in light of the earlier publication, it was obvious and lacked an inventive step.

Due to the ruling being rather interesting but only available in Hebrew, and since these Israeli rulings can and do have an effect on validity of corresponding patents elsewhere, I have translated the decision in full. At the end I have made some general comments.

Background

NovartisNovartis AG filed Israel Patent Application Number 195087 titled “ANHYDROUS LACTATE SALTS OF ANHYDROXY-3-[4-[[[2-(2-METHYL-1HINDOL-3 YL)ETHYL]AMINO]METHYL] PHENYL] – 2E-2-PROPENAMIDE AND PHARMACEUTICAL COMPOSITIONS COMPRISING THE SAME” as a national phase of PCT/US2007/070558 that was filed on 7 June 2006 and claims priority from US 60/804523 and US 60/869993, two US provisional patent applications filed in June and December 2006 respectively. The Israel national phase entry was submitted on 3 November 2008 and, on allowance, published for opposition purposes on 31 October 2012.

UnipharmUnipharm opposed the application on 3 January 2013. Subsequently, on 26 June 2013, Novartis requested to correct the application and, since neither Unipharm nor anyone else opposed this, the application was corrected and this ruling concerns an opposition to the amended application.

The parties submitted their claims and evidence and a hearing was held Read the rest of this entry »


A Storm in a Coffee Cup

March 20, 2017

This ruling relates to competing rights of different relatives to register and use trademarks for a family business that eventually split up. The marks were registered by a cousin living in Ramallah, and cousins living in East Jerusalem applied to have the marks cancelled on various grounds including passing off, misleading marks, inequitable behavior and lack of use.

234876 LOGOChain Stores of Izhiman Coffee Company own two trademarks: Israel Trademark No. 234876 for the logo shown alongside, and 234877 for the Arabic and English word mark
بن ازحيمان IZHIMAN’S COFFEE.

Maazen and Shapik Izhimian applied to have the marks canceled under Section 39 of the Trademark Ordinance 1972, and further under Section 41 for lack of use.

The marks were first applied for by Muhammad Musa H’alad Izhiman in January 2011, and after examination, were registered on 2 May 2012 for “coffee and coffee spices in class 30.” On 27 February 2014, the marks was assigned to Chain Stores of Izhiman Coffee Company, a Palestinian Company based in Ramallah that was owned by Muhammad Musa H’alad Izhiman and his two sons Kassam and Nasser.

On 5 March 2014, the brothers Maazen and Shapik Izhimian who own a Jerusalem based business in Bet HaBad Street, for marketing and trading in coffee and spices under the name “Izhiman’s Coffee” and who are cousins of Muhammad, submitted a cancellation request. In July 2014, the owners Chain Stores of Izhiman Coffee Company submitted their response.

The Background

EnjoyMuhammad, his three brothers and the Applicants for cancellation are all members of the same clan, that were involved in the family business established by Musa, Muhammad’s father, together with Mahmud, the father of Maazen and Shapik in the 1980s. The company had three addresses, the Ramallah address, the Jerusalem address now run by Maazen and Shapik, and a third branch in Abu Dis.

In 1994, Muhammad fell out with his brothers and nephews and received sole ownership of the Ramallah store. His three brothers and the nephews shared the Abu Dis and the Bet HaBad Jerusalem shops and opened a further outlet themselves in Ramallah. In 2000 the applicants for cancellation and Muhammad’s three brothers opened a fourth branch in Salah Shabati Salahadin Street in East Jerusalem. In 2008, these partners ceased to cooperate, and Maazen and Shapik were left with the Jerusalem Store in Bet HaBad Street.

love.jpgMaazen and Shapik submitted an affidavit written by Maazen and a second one from Riyadh Ghazi Halaq, the owner of a coffee shop near the Bet HaBad address that buys his raw coffee from them. The mark owners responded with an Affidavit by Nasser Muhammad Musa Izhiman, Partner and authorized signatory. At the end of September 2016, the Adjudicator of IP, Ms Yaara Shoshani Caspi held a hearing and the witnesses were cross-examined.
Read the rest of this entry »


New Israel Commissioner of Patents and Trademarks Appointed

March 19, 2017

Ofir AlonThe Minister of Justice Ayelet Shaqued has appointed Attorney and Patent Attorney Ofir Alon as the new Israel Commissioner of Patents, Trademarks and Designs to replace Commssioner Asa Kling who is coming to the end of his six year tenure.

Ofer Alon has degrees in Computer Science and Law from Haifa University. He qualified in IP Law in the Law Offices of Richard Luthi where he worked until 2006 and then became the IP Director and In-House Counsel of “On Track innovations”. Since 2010, Adv Alon has served as the head of Intellectual Property for the Technion’s R&D Tech Transfer Company.

The appointment follows the advice of the Committee for Finding a Suitable Candidate that was headed by Ms Ami Palmor, Director of the Ministry of Justice. Other committee members include Ilan Ram the Director of the Senior Civil Servants Organization, the Chief Scientist Avi Hasson, Professor Orit Fishman Afori – Dean of the Law School of Michlelet Minhal and Academic Representative and Retired Justice Izaak Engelhard serving as the public representative (which seems innappropriate to me – judges can represent the judiciary. The public is best represented by the layman. Maybe in this instance, a local serial inventor?).

According to the press-release, the committee were impressed with his developed views and vision regarding the Patent Office, its activities and its challenges, and with his plans for its international activities.

Comment

We note that with the appointment of Outgoing Commissioner Asa Kling the make up of the committee remained confidential. This led to rumours of cronyism between the judge allegedly chairing the committee and Judge Kling, the commissioner’s father. I cannot comment on whether these rulings were well-founded or baseless, but was very impressed with the outgoing commissioner’s rulings.

In this instance, the identity of the committee members has been published. We see this as a welcome step towards greater transparency. We are pleased that the committee were impressed with Adv Alon’s plans, however the press-releases do not explain what these plans are. We also do not know whether any other candidates were considered and if so, who the other candidates were. What was clear was that the published advertisements in the newspapers gave very short deadlines from responding, raising suspicions that this was a political appointment. A candidate with vision and proven management skills seems a very good idea. He will however also require judicial competence.

Mover-and-Shaker Kim Lindy claims to have helped Ofir Alon receive his appointment to the Technion Tech Transfer Company. However, she denies having influenced his appointment as commissioner.

In general, I am impressed with Minister Shaqued’s judicial appointments and her attempts to broaden the Supreme Bench to be more representative and heterogeneous. I also think the Commissioner should be more or less formalistic in his approach to IP rulings. That said, I have no ideas what Ofir Alon’s views are regarding IP issues or indeed, on other legal or political issues.

under the watch of the last two commissioners the Israel Patent Office has been revolutionized, and it is now fully computerized. There is pending legislation concerning designs, and proposed legislation to put the profession of patent attorneys onto a stronger legal footing. The patent office is now a profit generating, efficient and professional body. We wish the new commissioner luck and hope he takes the organization forwards to new heights.

 


Patent Attorney Round Table

February 14, 2017

knights-round-table-1

The Patent Office is hosting a round table on 21 March 2017 between 2 PM and 6 PM to discuss regulating the patent profession.

Background

In September 2016 the Israel Patent Office called for comments concerning proposed legislation to regulate the patent profession.

The official position of the Association of Israel Patent Attorneys is based on the Code of Ethics for Attorneys at Law. It was drafted by attorneys-at-law working for the Reinhold Group, who are not themselves patent attorneys.

I have written up a list of issues that I consider need regulating, see here and here. To my mind, treatment of trainee patent attorneys is a critical issue and so is the limits of the profession. At present, there are a large number of non-licensed service providers that ‘help’ entrepreneurs obtain patent protection. Some are foreign attorneys practicing in Israel opposite foreign patent offices, and others are not licensed anywhere but offer renewal services, portfolio management services and other services.

In general, one can expect the profession to be expansive when interpreting the law forbidding those not licensed in Israel as either Attorneys-in-Law or Patent Attorneys. Those that are not licensed tend to construe the law more narrowly and may see themselves as not being able to formally represent clients opposite the Israel Patent Office during patent prosecution, but see no reason not to draft applications for the Applicant to file directly, no reason not to handle renewals, not to offer search services and no reason not to prosecute patents abroad on behalf of Israeli applicants.

The problem is, of course, when something goes wrong.

The lines are currently blurred. For example, I was surprised to note that a company calling itself Patenting Solutions that is headed up by an ex-paralegal, now CEO, is now the official address of record for an Israel issued patent. This seems to imply that the Patent Office recognizes one of these cowboys non-licensed practitioners.

I would NOT advise bona-fide licensed practitioners to rely on their professional organizations to look out for their interests, and I particularly urge small firms of licensed patent attorneys and sole-practitioners to come along. That said, I urge ALL interested parties to attend the round table, including those not licensed in Israel, such as US giants like Finnegan. Registration is by the following email: TamarK@justice.gov.il.

 


Seeking a New Commissioner

February 12, 2017

Friday’s Idiot Achronot had an advertisement to the effect that the Ministry of Justice was looking for candidates to serve as the Head of the Patent Authority – The Commissioner of Patents.

More details can be obtained using ‘Chat’ at http://www.csc.gov.il

Applicants should download and fill out form 584 and a questionnaire on the website. In addition to the form and questionaire, Applicants are invited to submit a CV, recommendations, certificates of qualifications and other documents that indicate their suitability.

The final date for submission is 21 February 2017.

COMMENT

The last time the Ministry of Justice went on a Commissioner Hunt was in November 2010. I don’t know if Commissioner Kling is intending to go back to private practice, has been appointed to the Supreme Court or is intending to explore where no man has gone before him. I also don’t know if he’s given notice, has received his marching orders, or if the contract was only for 7 years.

Candidates are expected to have 10 years of practice since being licensed as attorneys by the Israel Bar, and should have IP experience and knowledge. Since the deadline for submission of candidateship is only a couple of weeks away, I suspect that the committee has a preferred candidate in mind, but do not have any idea who that is. I wonder if Deputy Commissioner Ms Jacqueline Bracha is putting forward herself as a candidate? Maybe it is time for a woman to serve in this illustrious position?

I think that coming after Dr Meir Noam, Commissioner Kling had a hard act to follow, but has done admirably well. The Israel Patent Office is now fully computerized and Patent Attorneys can submit Applications and other documentation on-line. There is greater transparency in the patent, design and trademark examination process (although we doubt the appointment of a Commissioner will be a transparent process). The patent office hosts periodic round tables and seminars to educate the profession and to obtain feedback from them. Examination standards seem to be higher and more consistent and decisions and rulings are detailed, and relate to the black letter law, case-law and comparable decisions from the UK, US and EPO.

It is the nature of a blog like this to point out apparent inconsistencies and what we consider to be poor rulings, but these are isolated instances. The overall picture is healthy. There have even been recent instances of patent attorneys who have moved from private practice to working as Examiners.

We wish all candidates the best of luck!


Frankenstein’s Monster

February 6, 2017

265232.pngIt sometimes happens that a second applicant files a similar trademark application to a previously filed mark that is pending. in such cases, a competing marks proceeding is initiated. the first to file gets some credit for so doing, but the main issue in determining which mark goes on for examination is the amount of usage by the two parties and good faith, or rather bad faith.

If one party is guilty of inequitable behaviour, their application will almost certainly be stayed. Where there are genuine independent filings of two applications for the same or very similar mark by different applicants, such that the second mark is filed before the first one is registered and they are co-pending, then the more widely used, better known and more intensively advertised mark proceeds to examination, and only once this mark is allowed or canceled, does the second mark  proceed to examination, where, in all likelihood, the registration of the first to be examined mark will prevent the registration of the second mark.

frankensteinIP Factor was approached by Best Foods Ltd. to file the logo shown above as a trademark application in classes 29 and 30. An application was filed and received the Application Number  IL TM 265232.

Prior to this being allowed, a second applicant, a Mr Doron Frankenstein filed Israel TM Application 261955 for the identical mark in the identical classes and so, on 10 May 2015, a competing marks proceeding was initiated as per Section 29 of the Ordinance.

On 4 November 2015, the parties were given three months to file their evidence, and were informed that failure to do so would result in their application being considered withdrawn and their application canceled as per regulations 24 and 25.

Best Foods Ltd cooperated with us and we filed their evidence. However Mr Doron Frankenstein did not file evidence and on 1 January 2017, the Trademark Department of the Israel Patent Office gave his attorneys were given seven days notice to file their evidence or their application would be deemed withdrawn.

Essentially Regulation 22 provides a three-month period for providing evidence, and authorized the Commissioner to cancel the application if no evidence is filed, or to grant an extension if reasonable to do so. Regulation 24(b) states that if the conditions of Regulation 22 are not met, the Application is considered as canceled, and the Applicant is informed accordingly.

The period for providing evidence was 14 February 2016 which is long past, so Israel TM Application 261955 to Frankenstein is considered withdrawn, and costs of 2000 Shekels are awarded to Best Foods Ltd. Application Number  IL TM 265232 was examined and has now been allowed.

COMMENT
It seems that Mr Frankenstein was a distribution agent for Best Buy Ltd. It could have been interesting to see who would have prevailed in a competing marks proceeding in such a case, i.e. whether the distributing agent may be entitled to rights in a mark registered locally. However, in this instance, since no evidence was filed, the substantive issues were not addressed.


Reinstatement of IL 122846 to Tyco Fire and Security rejected

January 11, 2017

The fourth renewal of Israel Patent No. 122846 to Tyco Fire & Security was not paid by the deadline of 4 January 2012. A request for reinstatement together with an affidavit was submitted on 9 November 2016, following an earlier request without an appropriate Affidavit that was filed on 1 August 2016 which was rejected in a ruling of 4 August 2016, that without an affidavit such a request could not be considered and that the date of resubmission with an Affidavit would be considered the date of submission. The submission of 1 August included an update that the renewal fee had been paid and a request for reinstatement without any reasons.

On 9 November 2016, an affidavit by Michael Lahat, an employee of Visonic, was submitted. Mr Lahat claimed that Visonic had transferred the rights of the subject patent to the present owners back in July 2013. He further claimed that he was a member of the IP committee of TYCO and consequently, could testify on behalf of the company.

When the renewal fee was due, an employee of Visonic informed the Israel Representative that the company intended to renew the patent themselves, without assistance. In practice the renewal was not accomplished and no explanation was provided. The employee in question left the company hack in November 2013, but prior to her leaving, the rensponsibility for paying renewals was transferred to CPI. In July 2013, this and other Visionic patents were transferred to Tyco. The transfer of ownership was recorded in the Patent register on 31 December 2014, but by this time, the patent in question had already lapsed over a year earlier.

Close to what would have been the fifth renewal date had the patent not lapsed (years 18-20), on 4 January 2016, CPI [MF- Probably CPA – Computer Patent Annuities] tried to perform the renewal, but, since the patent had lapsed, were unsuccessful in this attempt. In March 2016 the renewal company informed the patentee that the mark had lapsed. The attempt to  revive was submitted eight months later.

Section 60 of the Patent Law 1967 states that there are  three conditions for restoring a patent subject to public opposition:

  1. that the payment was not made due to reasonable causes
  2. That the Patentee had not wanted the patent to lapse
  3. That the  request to reinstate was filed as soon as the patent lapsing was known to the applicant or to his representative

The Deputy Commissioner Ms Jacqueline Bracha was not convinced that these conditions were met since it was not clear why the fee was not originally paid in a timely manner since the instructions given to the former employee were not made of record.

The fact that details of the patent were provided to the renewal company does make it clear that the patentee did not want the patent to lapse, so the second requirement is fulfilled, although the after a delay.

No suitable explanation was provided for months passing from when it was discovered that the patent had lapsed until the affidavit was filed.  In this regard it is noted that the patentee was an Israel company that was not difficult to communicate with. That said, even if the patentee was a foreign entity there is no justification for eight months passing in the modern age with modern communication channels.

Since two out of three of the essential conditions were not met, the request for reinstatement is refused.