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,

 


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 »


Patent to Astrazeneca  Successfully Opposed by Teva

April 20, 2017

Rosuvastatin_structure.svgRosuvastatin is a member of the statin class of drugs that is used in combination with exercise, diet, and weight-loss to treat high cholesterol and related conditions, and to prevent cardiovascular disease.

Israel Patent IL 166626 to Astrazeneca is the National Phase of PCT/GB2003/003463 filed in August 2003 and titled ” Process for preparing the calcium salt of rosuvastatin 

The Application was allowed and published for opposition in September 20011 and Teva filed an Opposition. A hearing was held in July 2015, and by June 2016 both sides had finished submitting their summaries and counter summaries.

The patent covers a process for obtaining (E)-7-[4-(4-fluorophenyl)-6-isopropyl-2-[methyl(methylsulfonyl)amino]pyrimidin-5-yl](3R,5S)-3,5-dihydroxyhept-6-enoic acid calcium salt. The application included 27 claims of which the first, independent claim is as follows: Read the rest of this entry »


Cancellation Proceedings Against an Israel Patent for a Modular Support Bracket

April 6, 2017

Figs for ACMoshe Lavi registered Israel Patent No. 157035 titled “MODULAR SUPPORT BRACKET”. A competitor, Zach Oz Air Conditioning LTD and Zach Raz filed to have the patent cancelled on grounds of invalidity. They seem to have botched the attempt, but I think that this ruling is a poor one.

Background

In the past, Lavi has tried enforcing the patent against Zach Oz Air Conditioning LTD. (Back then, around 2004, I was engaged as an expert witness by Counsel of the Defence, Soroker Agmon. In my Expert Opinion, I argued what is known as ‘the Gilette Defense’ stating that the correct interpretation of the claims was much narrower than that which Lavi and his lawyers Pearl Cohen Zedek Latzer Bratz (Pearl-Cohen) was using and Zach Oz’ support bracket was not infringing. Furthermore, if one considered that Zach Oz’ brackets were within the ambit of the claims, the patent would not have issued in the light of the myriad of prior art shelf support brackets.  On the day of the trial, Lavi dropped the charges and Zach Oz agreed not to infringe the patent.

It was not the first time that Pearl-Cohen have tried to assert a patent against a competitor that was not infringing. They tried this in the US on behalf of Source Vagabond against Hydropak. In that instance, the New York District Court fined Pearl-Cohen and the lawyers actively handling the case $187,308.65. That ruling was then Appealed to and upheld by the Federal Circuit Court of Appeals).

Frustrated by repeated bullying by Moshe Lavi and Pearl-Cohen, Zach Oz filed a cancellation proceeding against the Israel patent. Confusingly, their Attorney is called Pearl. It is not Zeev Pearl, but another practitioner.

Pearl-Cohen submitted a rather ambitious attempt to have the case thrown out as Zach Oz had not argued invalidity when accused of infringing, and Pearl-Cohen argued that this was a sort of in absentia estoppel since they could have raised the argument back then, and didn’t. The Commissioner threw that argument out, and allowed the cancellation proceeding to proceed.

The cancellation proceeding has now run its course and the following article Read the rest of this entry »


Patent Office Closures for Pesach

April 2, 2017
seder table
Because of the upcoming Pesach (Passover) holidays theIsrael Patent and Trademark Office (ILPTO) will be closed from Monday, April 10, 2017 – Monday, April 17, 2017 (inclusive).
In general, when a deadline falls on a day that the patent office is closed, the deadline is extended to the first subsequent working day, so any deadline for submissions, including PCT applications, national phase entries and Paris Convention deadlines falling from 10th April to 17th April can be submitted on 18th April 2017.
Note, the Patent Office is always closed on Fridays and Saturdays so will be closed on 7th and 8th of April, BUT since Sunday is a regular working day and so deadlines falling on 7, 8 or 9th April must be filed on 9th April.
Additional Israel Patent Office closures are as follows:
  • Israel Independence Day on Tuesday, May 2, 2017
  • Shavuot (Pentecost – the Feast of Weeks) –  Tuesday, May 30, 2017 and Wednesday, May 31, 2017.

DIY Patent Filing

March 30, 2017

brain surgery

Sometimes clients want to save on professional fees. The truth is that quality patent attorney work is not cheap. Patent Attorneys only have so many hours a day and set their fees to maximize income.

Filing abroad may seem to be overly expensive. More and more often I am approached directly by overseas inventors wanting to file national phases into Israel of their PCT applications, thereby trying to save on their local attorney fees.

Probably because of this blog, I also seem to receive more than my fair share of requests for help from inventors trying to file directly into Israel using the online interface. I don’t think that DIY filing is a good idea. Like many such things, one learns how not to do it by making mistakes. Most of the time, the inventors give up and pay me to file for them and also give me Power of Attorney.

Recently someone contacted me via the blog and by the time I got back to him, he’d managed by himself. So he has a number and filing date. I wonder if he will receive Office Actions without an address in Israel. From his name, I am fairly sure that he was not Jewish (well he may have been a converso as I believe was his namesake who (re)discovered the New World in 1942), and so suspect that he will have a problem with correspondence in Hebrew even if he does receive it.  Each to his own.

Today I was contacted by someone in India who filed directly into Israel and only had trouble paying the official fee, and wanted my to help them, and were sure that I’d do it for $150 dollars since they had another two cases in the pipeline.  Well I looked at the Application and noted that although they managed to courier the application with forms to the Patent Office within 30 months of filing, to receive a filing date they needed to pay the fees in 30 months.  That deadline passed nearly a month ago. I quoted for preparing affidavits and submitting a request for late filing and my estimated charge is more than I take for filing national phase applications. I also warned them that the standard for late entry into Israel is “Due Care”. Is waiting until the last-minute and then trying to file directly without professional assistance in a foreign country via an interface in a foreign language, Due Care? Well, if they are willing to pay my fees, I will argue that it is to the best of my ability. I did, however, warn them that it may be difficult to convince the Commissioner of Patents that due care was taken.