Down to Earth Issues That an Israel Code of Practice Should Regulate

September 26, 2016

The following is a list of issues that I would like deliberated by the Ministry of Justice or the Knesset before legislating a Code of Practice for Israel Patent Attorneys. The same issues should be discussed by the IPAA and other relevant fora when considering voluntary codes.

In no particular order:

Patent Attorneys often provide opinions to third parties such as investors.If they have a conflict, maybe they should not be allowed to provide an opinion or should at least be required to announce their interest.

  1. Should patent attorneys that are not employees but outside service providers be allowed to own shares in their clients?
  2. Should patent attorneys that are not employees but outside service providers be allowed to draft applications for shares in their client’s business?
  3. May a patent attorney  that is not an employee but an outside service provider be allowed to jointly own a patent application with his client?
  4. May a patent attorney that is not an employee but an outside service provider be allowed to list himself as an inventor on a patent that he or one of his partners or an employee of the IP firm is filing and prosecuting?

Israel Patent Attorneys are specialists in IP Law but do not have a general legal background (unless, like me, they also have Law Degrees). If they are not licensed to practice law, regardless of their personal knowledge, what are the borders of what services can they legally provide? Attorneys-at-law tend to take a narrower view and patent attorneys a wider view. The border is not clear. Now is an excellent time to provide clarity and guidelines.

  1. May a patent attorney who is not an Attorney-At-Law provide legal information regarding IP related tax issues, the sale of IP, copyright and the validity of Israel patents.
  2. May a patent attorney who is not an Attorney-At-Law provide advice regarding service inventions?

What Patent related services may a self-styled patent expert, patent manager, IP manager, Search expert, IP Paralegal or other IP practitioner who is neither a patent attorney or an attorney-at-law be allowed to practice?

Section 154 of the Israel Patent Law lists the Rights of Patent Attorneys

154.—(a) Patent attorneys have the exclusive right to deal in Israel, for remuneration, with applications for patents, designs and trade marks and with the preparation of any document to be submitted to the Registrar, the office or to an authority for the protection of industrial property in another country, to represent the parties and to handle and represent in any proceeding before the Registrar or in the Office.

(b) This section does not derogate from the right of an advocate or of a State employee to perform the said acts within the scope of his functions.

There are all sorts of people who offer patent related services that are not formally qualified and are not regulated. Section 19 and 20 of the Israel Bar Law and Section 154 of the Patent Law which is reproduced above make this quite clear. The Law does not seem to have teeth, and there are a whole slew of non-patent attorneys that provide such services.  Nevertheless, it is not always clear what the meaning of the Law is. For example:

  1.  Is a graphics person who produces IP drawings for a patent attorney to file preparing a document for submission to the registrar. There are a large number of such  people offering services to patent attorneys on a free-lance basis. I’d argue this should be legal, but is it?
  2. What if a graphics person provides an inventor with such figures for inventor to submit himself?
  3. What if a company, say a prototyping company, produces such drawings and accompanying description for an inventor to submit himself?
  4. What if such a company also provides draft claims?
  5. What about a person who has worked for a patent attorney firm in the past or is moonlighting and still working for a patent firm. I am thinking of a paralegal or a trainee patent attorney or someone else who is neither an attorney-in-law nor a patent-attorney.  Does this happen? Yes. Is it illegal? I think so.
  6. What about a US licensed practitioner who has failed to pass the Israel Patent Bar, and merely helps clients obtain IP rights in the US? Such a person seems to be helping with the preparation of any document to be submitted to the office or to an authority for the protection of industrial property in another country. It seems to be illegal.
  7. But what about companies that are bona fide US firms (or European or other foreign firms) whose attorneys come to Israel a few times a year to meet with their clients? If they accept remuneration for advice given locally or work on an office action whilst here, is this illegal?
  8. What about US firms that operate in Israel and aggressively chase Israeli clients?

I would argue that their operating an office here is illegal and contrary to Section 154. The fact that they do not prosecute patents in Israel does not make their offering IP services to Israel clients directly a legal activity.

Advertising. The Israel Bar Code of Ethics places significant limitations on the type of advertising that Israel Attorneys-at-law are allowed to engage in. The voluntary code of ethics for Israel Patent Attorneys has similar limitations that are voluntary. The response to the Call for Comments that the IPAA sent out last time was drafted by Reinhold Cohn lawyers and called to limit, at least locally in Israel, patent attorneys from using any form of advertising that Attorneys-in-Law cannot use. There is some legitimacy and logic in holding patent attorneys to the same standards as Attorneys-In-Law, but there are counter arguments. If patent attorneys provide services that are hybrids of technical,,scientific and legal services, maybe they should have the option to market themselves in a more high-tech service provider and less legal manner? Note Reinhold Cohn themselves have moved from Legal South Tel Aviv to a High Tech park and moved out of a Bauhaus building and into a modern building in a high-tech park. They’ve changed their logo to something more distinctive and less legal looking, and adopted the high-techy acronym RCIP. Let’s take this one stage further. Reinhold Cohen has a sister firm of attorneys at law to provide complimentary services, handling oppositions, enforcement and the like.  Does this mean that a patent attorney cannot handle these issues? If a patent attorney does not want to handle these issues and wants to brand himself more like a technology service provider, may be he or she should be able to advertise more proactively?

Another corollary of aping the legal profession, is that patent attorneys would have to have  a dedicated premises for meeting clients that is not shared with any other type of business. This limitation of legal practices may be inappropriate to patent attorneys.

  1.   Two or more law firms can share office space without competing, if one handles wills and the other handles litigation, conveyancing (real estate law),  one handles criminal and the other civil, etc. There are 75,000 potential room-mates to share office space with. Patent attorneys don’t have this flexibility. If Reinhold Cohn’s proposal is accepted, they will have to rent a full office, or share with direct competitors. Note – small offices are hard to come by and the rents are usually much higher.
  2. Why shouldn’t a high-tech patent attorney specializing in start-ups rent office space in the offices of a venture capital firm, a high-tech incubator, a start-up trendy premises like We Work? It may not be appropriate for a large IP firm, but it may be a good solution for a sole practitioner or a small firm.
  3. Maybe in the modern world, a patent attorney does not need an office at all? One can have all one’s files on a laptop and work anywhere. I have a number of clients that I visit who have never visited by office. Maybe I don’t actually need an office? The code of ethics for lawyers is a document that was drafted in an earlier age. It has occasionally been updated. It may be inappropriate as a basis for an up-to-date profession that provides services at the cutting edge of technology.

Treatment of trainees and employees

I think trainees should be registered within less than a month of starting their apprenticship. They are entitled to a minimum wage. Percentage based remuneration is not appropriate for trainees.

Should percentage based remuneration be legal for any employee?

Should patent attorney firms be able to demand exclusivity from a licensed practitoner, whilst employing him on the basis of tax invoices for jobs on eat-what-you-kill basis?  I am aware of situations where employers do not fire employees working on a percentage basis but simply close the tap. The employer does not provide redundancy pay.

Some firms make employees sign non-compete clauses, contracts requiring them to stay for at least a year after qualifying, letters explaining that strange employment terms where the employees idea that he insisted on and other shenanigans. I think that the current proposed code of conduct is an ideal opportunity to address all these issues.

Leave a Comment » | Intellectual Property, Israel Related, Patent Attorneys, Uncategorized, הצעת חוק, עורכי פטנטים, קניין רוחני, קנין רוחני | Permalink
Posted by Dr Michael Factor

Revival of IL 132540 Opposed

September 18, 2016

chequeBack in June 2015 we reported that an attempt by the patentee Yehuda Tsabari to revive Israel Patent Number IL 132540 titled “A method and System for Direct Transfer of Funds via Magnetic Cards” and covers using credit / debit cards to gift money into the account of celebrants. It is designed for use by guests at weddings and Bar Mitzvas, and is a variation of what a refer to as a hardy perennial – it is the sort of invention that seems to be reinvented every few months, and I have provided consultations to several would be entrepreneurs, and have even drafted and successfully prosecuted patent applications for variations of the invention in the past.

paymentTsabari’s patent was abandoned due to failure to pay the fourth renewal for years 14 to 18. The Patent Office agreed to allow the revival subject to their decision publishing for opposition purposes. On publication, Going Dutch Ltd opposed the revival claiming that the patent was knowingly and intentionally abandoned, and the present decision is a substantial ruling on their opposition.

Tsabari’s application was filed on 24 October 1999 and the patent was allowed on 13 April 2004. The fourth renewal was due on 24 October 2013 but was not paid, and six months later, the patent lapsed as per Sections 56 and 57 of the Israel Patent Law 1967.

reinstatementOn 7 July 2014, Mr Tsabari filed a request for reinstatement together with an affidavit, arguing that the reminder was sent to the wrong address as the Israel Patent Office has failed to update its records with his new address, despite his updating them. According to the Affidavit, in 2005, on receiving the patent, Mr Tsabari requested that a change of address from the address of the Attorney-of-Record to his own address be entered into the Patent Office records. Despite his request, the Israel Patent Office sent a reminder for the renewals to the offices of Dr Mark Friedman, the Agent of Record. According to Tsabari, it was this mistake by the Patent Office that caused the patent to become abandoned. In support of his contention, Mr Tsabari produced a receipt for 272 Shekels which was the fee for updating the patent office register. Tsabari further claimed to have wanted the patent to remain in effect and had attempted to enforce it both in the District Court and in the Patent Office. Furthermore, he’d taken immediate action for reinstatement as soon as he’d learned that the patent had become abandoned.

reinstatement2In light of the circumstances described in the request for reinstatement, Deputy Commissioner Jacqueline Bracha was convinced that conditions for reinstatement under Section 60 of the Israel Patent Law 1967 were met, and, in her ruling of 24 July 2014, she ordered the notice of intent to reinstate published in the patent office journal for opposition purposes.

On 23 November 2014, Going Dutch Ltd opposed the reinstatement. Going Dutch Ltd brands itself Easy2give and was active in an initiative to provide a credit card based gift service at functions and events.

oppositionIn their Opposition, Going Dutch Ltd claimed that the reinstatement was contrary to Section 60 and should not have published. As a fall-back position, they argued that if the revival be upheld, they should be considered as having relied on the patent lapsing and should be indemnified from being sued for infringement, and could continue to utilize the patent under Section 63 of the Law.

In their counter statement of case, the Applicant contended that they did NOT want the patent to lapse. In support of this contention, the Applicant described attempts to commercialize the invention, and included a few appendices to support the claims. However, the Applicant requested that the appendices remain confidential, claiming that they were trade-secrets under the 1999 trade-secret act, and, in her decision of 7 May 2015, The Deputy Commissioner agreed to these remaining confidential.

The patentee also described attempts to enforce the patent against Check-Out Ltd in the District Court, and Check-Out Ltd.’s attempts to have the patent cancelled in a proceeding before the Israel Patent Office. Also, attempts at collaboration with Check-Out Ltd. that were aborted for financial reasons were described.

The Opposer’s Claims and Evidence

The Opposer, Going Dutch Ltd claimed that the reinstatement was contrary to Section 60. They contended that no reasonable excuse was given for the renewal not being timely paid and they argued that the request for reinstatement was inequitable. The 272 Shekels receipt shown by Tsabari was not for a change of address at all. Rather, it was the second renewal paid in 2005 and so the Applicant did not show evidence that the patent lapsed unintentionally. It was evident that the payment in 2005 had nothing to do with the patent lapsing since five years later, in 2010, despite the change of address, one of the owners managed to renew the patent.

The Opposer alleged that Tsabari wanted the patent to lapse. The Opposer learned this from Tsabari’s lack of activity in this area from when the patent was filed until the date of the Opposer’s submission, which indicates that the business had failed and the applicant had lost interest. The business failure of Check Out Ltd. which was a potential partner, further supports the allegation that Tsabari had abandoned the patent.

In cross-examination in February 2013, it transpired that Tsabari was aware of the Opposer’s activities back in 2013, and this supports the opposer’s contention that reinstatement was not sought immediately on learning that the patent had been abandoned.

As supporting evidence to their claims, the Opposer, Going Dutch Ltd, submitted an affidavit of Mr Guy Giyor, who was a founder and former CEO of the Opposer. Mt Giyor testified that the Opposer was established as a company offering various event related services including credit based presents at events. Mr Giyor testified that the Opposer had relied on Tsabari’s patent lapsing and Tsabari’s lack of  business activity  in developing their own initiative. Furthermore, Mr Giyor testified that Going Dutch Ltd started marketing in June 2014, after the patent had lapsed.

 Applicant’s Claims and Evidence

The Applicant detailed his attempts to monetize the patent, and repeated his claims from the application to revive, that the patent had lapsed due to a technical error of the Israel Patent Office, which continued to send reminders to the wrong address, despite a request to change the address of record submitted in 2005.

The Applicant also claimed that the Opposer was acting inequitably and in bad faith since the opposer had started commercializing their invention before the patent had lapsed, and had, in fact, infringed the patent. The Applicant for revival substantiated his claim by submitting newspaper articles that showed that Mt Guy Giyor had taken actions in 2012 and had set up a company in 2012 with the intention as stated in its constitution, of enabling wedding presents to be made at events via credit cards. The Applicant backed his claims with an affidavit.

On 3 February 2016 a discussion was held before the Deputy Commissioner, Ms Jacqueline Bracha, during which both the Applicant and the CEO of the opposer were cross-examined on their affidavits.

Discussion

The legal basis for opposing reinstatement of a lapsed patent is Section 61 of the Law, as follows:

Anyone may oppose a request to reinstate a patent within three months of the decision to allow reinstatement publishing, based on a claim that the Commissioner should not have authorized reinstatement.

The Commissioner’s authority to publicize the decision to reinstate a patent is based on Section 60 of the Law, which defines three conditions for reinstatement that are all required to be fulfilled:

  1. The renewal fee was not paid for reasonable reasons
  2. The patentee did not intend to abandon the patent
  3. The request for reinstatement was filed soon after realizing that the patent had lapsed.

When ruling on an Opposition to reinstatement, the Commissioner has to reconsider whether the conditions are fulfilled in light of the evidence brought during the opposition.

There is a difference in evidentiary requirements for authorizing reinstatement subject to publication of the decisions for opposition purposes as per Section 60 of the Law, and the evidentiary requirements to affirm that decision under Section 61 of the Law. During an opposition, the Opposer challenges the Commissioner’s determination that there are grounds for reinstatement and has to provide a strong case that the Commissioner erred in the assessment.  For more details, see the discussion on reinstatement of IL 15211 which lapsed due to failure to pay the fee; Gershon Eckstein et al. vs. Mezer Peles, Limited Paretnership of Kibbutz Mezer, published 1 April 1984.

After consideration of the claims and evidence of the parties, the Deputy Commissioner concluded that the non-payment of the renewal fee was not actually due to reasonable circumstances.

In the request for reinstatement, the Applicant claimed that the non-payment was due to a mistake of the Israel Patent Office, which, despite his request to the contrary, did not change the address of record. consequently, reminders sent  from the Patent Office did not reach their destination. As evidence of the request to change the address of record, the Applicant produced a receipt for payment of a Patent Office fee of 272 Shekels.

Here it is noted that in the past, as ruled in the Gershon decision, lack of payment of Renewal fees due to the Patentee forgetting has been recognized as a scenario where reinstatement is possible under Section 60 of the Law. See the Eckstein ruling and also the Opposition to reinstate IL 14548 Reuven Margulies vs. Exra Darrel et al. , 12 January 1972. However nowadays, in a slew of decisions on this matter, it has been ruled that failure of the Israel Patent Office to send reminders does NOT constitute reasonable grounds for revival, since tracking these deadlines is the responsibility of the patentee. See, for example, the decision re IL 185526 Chaled A’quad et al. from 24 October 2012, since we are now in an age where the patentee can easily track renewal dates, the onus is on him to show that a patent lapse wasn’t due to negligence or abandonment.

In the decision to allow reinstatement, the Deputy Commissioner had noted applicant’s attempt to update their address and their apparent relying on the Israel Patent Office to remind them of the renewal and the Patent Office’s apparent failure to do so. However, in the hearing on the Opposition to that decision it transpired that back in 2005, a payment was made to renew the patent and not to request updating of the patentee’s address. In a more rigorous examination of the patent office records it transpires that there is no evidence of any request to update the patent office record as to the address of the patentee and no evidence that any fee for this was paid. Back then, the fee for renewals was 272 Shekels and for amending the register was 204 Shekels, so it clear that the payment receipt was for the renewal and not for amending the register.

On presentation of the evidence that the fee paid was for the renewal, the Applicant for Reinstatement (Patentee) was unable to provide further evidence for requesting a change of address and, since he’d kept a copy of the renewal fee, one assumes that he would have kept a copy of the fee for change of address had it been paid. The Applicant neither provided evidence for the alleged request to change address nor any other reasons or evidence justifying the renewal not being timely paid.

The patentee who was not represented, requested to understand why he was being cross-examined, and this was explained to him as follows:

The relevant questions as far as this hearing is concerned are whether you wanted to abandon the patent, and, if you did not intend abandoning the patent, was the failure to pay the renewal fee due to a reasonable reason, and so the question as to whether you were informed of the renewal and whether you are still in contact with Dr Friedman (the agent of record) or not, are the the most relevant questions to this discussion. (Protocol Page 26 line 12).

In addition, the Deputy Commissioner was somewhat surprised that the patentee did not call Dr Mark Friedman to testify that he had not sent a reminder regarding the fourth renewal. Dr  Friedman’s testimony would have shed light on whether actions were taken after issuance to keep the patent alive and what instructions were given to Dr Friedman regarding renewal of the Patent.

The failure to provide testimony from Dr Friedman has negative evidentiary weight. Without a reasonable explanation, one can assume that Dr Friedman’s testimony would not have helped the patentee – See Civil Appeal 548/78 Ms. Anonymous vs. Mr Anonymous, p.d. 35(1)736, 760 (1980):

The Courts have always considered that a party to a decision will not fail to provide evidence that is in his favour. Failure to bring such evidence without clear explanation indicates that such evidence would act against his interests. This assumption is well rooted in both civil and criminal rulings, and the more important the evidence, the more clearly is it not being brought indicative that were it to be brought, it would act against the party bringing it. See Civil Appeal Naftali Schwartz vs. Raminoff Company for Trading and Building Equipment LTD. (Nevo 27 July 2008).

The lack of a connection between the change of address of the patentee and the non-payment of the renewal is evidenced by the fact that eight years later, in 2013, the patentee did pay the third renewal. This was clarified after the hearing when the Patent Office checked their records. This fact was reported to both sides in the 22 February decision, but the patentee did not relate to this in his summation.

The above is sufficient for the opposition to reinstatement to be successful.

Although not necessary to do so, the Deputy Commissioner added that the evidence shows that the patentee was tardy in monetizing his intellectual property. The Applicant showed that four years passed between the patent issuing and the first draft of an agreement with a credit company, and that agreement was never signed. Nearly 5 years passed from the patent issuing until the patentee had a detailed specification for a system based on the invention. The various cases between the patentee’s company Shai For You (Shai means gift) and Checkpoint seemed to have lapsed with Checkpoint going bankrupt in 2014 (see 8870-10-09 Shai For You vs. Check Out LTD 7 January 2014) and Checkpoint’s challenge of the validity of this patent was also abandoned in November 2012.

It is noted that patentee alleged that Check Point abandoned their case due to them collaborating with the patentee. However, since Check Point had requested an extension of time, doubt is cast on the patentee’s version of events.

The Applicant testified that he’d known about the Opposer’s actions back in 2013, which he alleged, infringed the patent.However, the Applicant failed to take any action, and did not even send a Cease and Desist Letter. This also indicates that the Applicant had lost interest in the patent.

CONCLUSION

Instead of justifying his request for reinstatement, the Applicant chose to attach the Opposer, accusing him of tardiness and inequitable behaviour and of attempting to commercialize the patent before it was abandoned.

Mr Giyor even testified that he knew about the patent and undertook various examinations via a private detective t ensure that the sole licensee, Shai Four You LTD> was no longer active. This indicates that he thought that Shai Four All’s patents could be enforced against him. Since Giyor’s company was established in 2012, it does not seem that Giyor had relied on the patent lapsing, and had launched his competing service in May 2013, as is clear from one of his publicity films on the Internet.

Anyone can oppose the reinstatement of a patent. The incentives for so doing are usually economical, typically the desire to utilize the patented invention. In this instance it appears that the Opposer started using the patent prior to it lapsing and waited for the patent to lapse rather than cooperating with the patentee.

equitableIt will be appreciated that the Duty of Equitable Behaviour applies to all fields of law (see Sections 39 and 61 of the Law of Contracts 1973), and the rights to a hearing are not exceptions to this rule see Bagatz 566/81 Eliyahu Amrani vs. The Supreme Rabbinical Court p.d. 37(2) 1 (7 August 1982).  Although this cannot be taken into account in the Opposition itself,  and the Opposer has proven that the patentee had not shown that the abandonment was unintentional as required by Section 60 of the Law, this can be taken into account when ruling on costs. Consequently, due to the Opposer utilizing the patent knowingly prior to it lapsing, no costs are awarded.

Opposition to IL 132450 to Yehuda Tsabari (Shai Four You) by Going Dutch Ltd, ruling by Ms Jacqueline Bracha, 31 August 2016.

 

Leave a Comment » | bad faith, inequitable behaviour, infringement, IPO, Israel IP, Israel Patent, Israel Patent Agency, Israel Patent Office, Israel Patent Office Rulings, Israel Related, Licensing, non-use, opposition, oppostion, patentable subject matter, Patents, reinstatement, Section 60, Uncategorized, החלטת רשות הפטנטים, התנגדות, פטנט, פטנטים, קניין רוחני, קנין רוחני | Permalink
Posted by Dr Michael Factor

Extending the Deadline to File Complaint

September 13, 2016

genentechIL 146954 to Genentech is titled “HUMANIZED ANTI-ErbB2 ANTIBODIES AND TREATMENT WITH ANTI-ErbB2 ANTIBODIES”. It is the national phase of PCT/US2000/07366. The active ingredient is Pertezumab.

Pertuzumab received US FDA approval for the treatment of HER2-positive metastatic breast cancer on June 8, 2012.[3] Pertuzumab was developed at Genentech and is now owned by Roche which acquired Genentech in 2009. The drug received regulatory approval in Israel on 8 July 2012, and on 21 February 2013 a patent term extension was requested and this was granted until 11 May 2021.

patent-extensionThe patentee requested an extension of time for responding to an Examiner’s action under Section 161 of the Israel Patent Law 1967. As explained below, the intended response relates to the intention to publish the grant of a patent term extension until the date awarded. However, the intention published in the July 2016 journal.

On 19 February 2013 the patentee requested a patent term extension for IL 146954. The conditions set out in Section 64e(5) of the Law were in place, but at that stage there was no extension to the basic patent in the US as required by 64d(5).  In the January 2015 journal there was an announcement of the intention to grant an extension under Section 64e(5) 1 of the Law.

Afterwards, when the Section 64d(5) requirement was met, the patentee gave evidence of the patent term extension of the basic patent in the US. In that notice the patentee noted that they expected that the Examination would be completed and a corresponding extension of the patent would be granted.

Consequently, the Deputy Senior Examiner completed her Examination and, on 4 July 2016, informed the patentee that the patent was entitled to a 353 day extension until 10 June 2021, which is the length of the extension in the US, and is the shortest of all the extensions granted by an extension granting state, as per Section 64i(1) of the Law.  The Patentee had until 18 July 2016 to respond to this notification.

calculating-sec-154-patent-term-adjustments-1-728-1On 18 July 2016, the patentee responded to this notification. From the wording of the response it is clear that the patentee does not have any problem with the mathematics used in  calculating the patent term extension. However, the patentee noted their position that the Examiner should take into consideration not just the Patent Term Extension period in the US (PTE), but also the Patent Term Adjustment (PTA) in the US.

Without substantive reference to the relevancy or otherwise of the Patent Term Adjustment, it is noted that until the patentee requested that the extension NOT be published, Genentech (Roche) had not raised Patent Term Adjustment (PTA) related issues and even now, did not provide details of the Patent Term Adjustment granted by the USPTO. So the Examiner was under no obligation to relate to this additional time period.

Once the period for responding had passed, and on receipt of the Patentee’s response, the Examiner informed the Patentee on 18 July 2016 that she intended extending the patent protection period in  Israel by the Patent Term Extension (PTE) awarded in the US as per Section 65(e)(5)(3) and that this decision would publish for opposition purposes in the July Journal, and this happened. The request to extend the period for filing a critique was submitted on 11 August 2016, after the publication of the extension order. The contents of the critique, which has not been submitted, is unknown.

The reason put forwards by the patentee for the patent extension is based on the allegation that the current law damages their property rights and they are considering the possibility of changing the current legislation. Thus it follows that the patentee does not contend that the Examiner’s actions were in accordance with current legislation. The requested Extension is until the basic patent lapses, which is until 23 June 2020, or a further year if the Patent Term Extension is also considered.

Thus the patentee does not argue that the Examiner was acting in contravention of the law and admits that the Examiner’s actions were in accordance with current legislation. The Commissioner, Asa Kling, does not believe that a patentee’s intention to try to change the legislation is sufficient reason for the Israel Patent Office to delay publishing its actions; particularly when the action has already happened and happened in accordance with the Law.

So the Commissioner does not see fit to extend the period prior to publication.

In a footnote, the Commissioner does not think that his refusal in any way adversely affects the patentee, since he can always submit a detailed request for recalculation under Section 164(c) of the Law.

COMMENT

In a recent decision the Supreme Court weighed in on a challenge to the patent term extension rules as being unconstitutional, and found that the legislative body can write the rules as it sees fit, to find  a balance between the competing need of the drug developers to be able to profit from their investment and have an incentive to conduct research and development and to file applications, with the public good provided by competition, non-monopolistic markets with generic competition.

The specific issue of the differences in Patent Perm Extensions and Patent Term Adjustments was discussed in a February decision.

I can understand the drug manufacturers considering the current law unfair, but, in light of the amendment to the amendment, it does seem to reflect what the Knesset wants and has been upheld by the courts. I don’t think that Genentech – Roche will be able to  have the Law changed.

7 Comments | drugs, Intellectual Property, Israel IP, Israel Patent, Israel Patent Agency, Israel Patent Office, Israel Patent Office Rulings, Israel Related, patent term extensions, Patents, PCT, pharmaceuticals, pharmaceuticals and Biotechnology, Section 64, Uncategorized, החלטת רשות הפטנטים, הצעת חוק, מחלקת סימני מסחר, פטנט, פטנטים, קניין רוחני, קנין רוחני | Permalink
Posted by Dr Michael Factor

Applicant Successfully Has Allowance of Patent Application Cancelled, Following Initiation of Opposition Proceedings

September 12, 2016

reexaminationUsually an Opposition results in an allowed patent being either cancelled, upheld or having its claim-set narrowed. Apparently, not always!

Israel Patent Application No. 240684 titled “GLYCOPYRROLATE SALTS” was filed by Dermira Inc on 19 August 2015. It is the national phase entry of PCT/US2014/19552 and so the effective filing date is 28 February 2014. It claims priority from two provisional applications and from two regular US applications, but the earliest priority claimed was 28 February 2013.

On 18 October 2015, the Applicants petitioned to make special under Section 19(a)(a)(2) of the Patent Law 1967 and requested allowance under Section 17c based on US 9,004,462.

After the application was allowed and published for Opposition purposes, S0l-gel Technologies ltd. opposed the patent issuing. They noted that the case had been allowed under Section 17c, but this was incorrect since the two regular US applications from which priority was claimed were continuations-in-part of US 13/781,390 which published on 15 August 2013.

In the US, the earlier patent application to which material is added in a Continuation-in-Part cannot be cited against the Continuation-in-Part. It is a little like a Patent-of-Addition in Israel.

Since priority is NOT claimed from US 13/781,390 which published 15 August 2013, it is prior art to IL 240684 since its publication precedes the filing of PCT/US2014/19552 on 28 February 2014. Consequently, as far as Israel is concerned, US 13/781,390 could be cited as prior art against IL 240684 and so allowance under Section 17c was wrong, as there is presumption of validity since US 13/781,390 (now US 8,558,008) was not prior art in the US, but is prior art against the Israel application.

Here’s the odd thing. US 13/781,390 was itself filed on 28 February 2013, so the PCT could have claimed priority from it!

In their statement fo case, the Opposer requested that the allowance be cancelled and the case returned to the Examiner for examination on its merits in light of the prior art (including US 13/781,390). The Applicant (represented by Pearl Cohen) agreed with this suggestion.

In his ruling, the Commissioner, Asa Kling, noted that only rarely can an allowed patent be returned to the Examiner. Patent prosecution is a one way street, and after allowance, the Examiner is no longer part of the process. Generally, opposed patents are either invalidated as lacking novelty and inventiveness, or the scope of their claims is narrowed, or, the opposition is overcome or withdrawn and the patent as allowed, is granted.

In this instance, both sides agree to the allowance being withdrawn and to the claims being (re)considered on their merits by the examiner in light of the prior art, including  US 13/781,390, thereby avoiding costly opposition proceedings.

The commissioner noted that agreement of the parties is not generally enough for odd solutions, due to their being a public interest. Generally one does not return an allowed patent application to the Examiners since the public is always third-party to such proceedings. See the ruling on request to cancel allowance of IL 219586 Fritz Collischan GMBH vs. Data Detection Technologies Inc., 9 March 2015, paragraphs 9 and 10 of the ruling.

However, it is clear that the Section 17c assumptions detailed in the Albermarle ruling do not apply here as inventiveness over US 13/781,390 was not considered by the US Examiner as it was not an issue in the States, and so the IPO cannot rely on the US Examiner’s ability, professionalism and integrity in this instance. In the circumstances, for the sake of efficiency, it was deemed appropriate to reexamine rather than to conduct an opposition. The Commissioner allowed the Section 17c allowance to be withdrawn and the case to be returned to the examiners for substantive examination on the merits.

The cancellation of the allowance now publishes for opposition purposes. Costs of 2500 Shekels are awarded to the Opposers; the low sum reflecting the early stage reached.

COMMENT

In this instance, the PCT application could and should have claimed priority from US 13/781,390. The  Opposers could have claimed both invalidity over US 13/781,390 and / or inequitable behaviour in requesting allowance under Section 17c from a continuation in part. There is a public interest in technologies remaining in the public domain. Thus I think this decision could be challenged in an opposition. Still, doing so takes resources and would incur costs. For the same reason that S0l-gel Technologies ltd seem happy with reexamination, I suspect that noone else will file an opposition to this ruling.

3 Comments | anticipation, bad faith, inequitable behaviour, infringement, Intellectual Property, IPO, Israel, Israel IP, Israel Patent, Israel Patent Agency, Israel Patent Office, Israel Patent Office Rulings, Israel Related, obviousness, opposition, oppostion, Patent Attorneys, Patents, Uncategorized, US Patent Office, USPTO, בחינה על אתר, החלטת רשות הפטנטים, התנגדות, פטנט, פטנטים, קניין רוחני, קנין רוחני | Permalink
Posted by Dr Michael Factor

Publication on the Internet Prior to filing Israel Design Applications

July 26, 2016

Shoe publicity     Shoe publicity 2

Background

This ruling clarifies the extent that apparently pre-filing date publications on the Internet may be used to prevent design registration in Israel.

Although there is draft legislation making its way through the system, in Israel designs are currently protected by the archaic Patent and Design Ordinance of 1924, a legacy from the British Mandate. One of its oddities is that absolute novelty is required and there is no grace period. An even odder oddity is that only absolute local novelty is required and someone bringing a design into Israel for the first time is entitled to register it prior to importing and is entitled to up to 15 years of protection.

The previous Commissioner, Dr Meir Noam, grew tired of waiting for the Knesset and the Ministry of Justice to get their acts together and in a Commissioner of Patents Circular decreed that publication on the Internet, particularly in the design registers of foreign patent offices that are accessible on line from Israel via their websites,  would be considered as available in Israel and novelty destroying. Although arguably ultra vires, the Circular was never challenged. There remains a question as to what other Internet publications are novelty destroying, and the present ruling addresses this issue.

A third oddity is that unlike much of the rest of the world where Examination of designs is only for conformance to formalities, in Israel design applications are substantively examined in terms of novelty and the Examiners may search newspaper press-releases, Applicant’s website and, it transpires, various web-sites offering goods for sale.

This case

Naalei Nayot (1994) LTD submitted several Israel design applications including Application Nos. 55280, 55283,55288, 55289, 55291, 55270, 55271, 55278 and 55279. All these applications were submitted on 26 February 2014 in class 2(04) that covers footwear, socks and stockings.

The applications were submitted together with other design applications that were either registered or were abandoned due to issues raised during the examination process. These nine applications were rejected in a single office action of 17 June 2015 which resulted in the Applicant requesting a hearing that was subsequently held on 18 October 2015.

The nine applications fall into three categories as follows:

  • Applications 55288, 55291, 55270 and 55279 were considered as lacking novelty and originality as required by Section 30(1) of the Patents and Design Ordinance 1924. These rejections were based on two Facebook advertisements on the Applicant’s Facebook page. These advertisements from 20 February 2014 preceded the application date and appeared to show the shoes.
  • Applications 55280, 55283, 55289, 55291 and 55271 received office actions on 5 February 2012 that alleged a lack of novelty and originality as required by Section 30(1) of the Patents and Design Ordinance 1924 on the basis of sales illustrations from various advertisements. When the applicant responded to the objection, the Examiner again forwarded a publication on Naalei Nayot’s Facebook page.
  • Application 55278 was rejected on the basis of an advertisement on the Applicant’s website. In this instance, during the hearing, the Applicant withdrew the application and a decision issued on 18 October 2015.

Regarding the other eight applications, the Applicant does not consider the advertisements and the Facebook advert that the Examiner cited as being novelty destroying prior art.

The Applicant argued that advertisements by others are third-party Internet adverts that are not connected to the Applicant and should therefore be considered carefully. The websites are frequently updated marketing sites, and so their trustworthiness is suspect. In particular, the dated consumer comments relating to products, some of which are anonymous, may not have related to the specific products at all!

The Applicant supported their position from a ruling by Deputy Commissioner Jacqueline Bracha concerning design application 51593 and 50594 Tequila Cuervo, S.A. DE C.V. (9 June 2014), to the effect that a publication on a sales website does not necessarily knock out the novelty of a subsequently filed design application. As stated in paragraphs 44 and 45 thereof:

In our case, due to the nature of the website, it is reasonable to accept that the images and prices of goods shown will be updated in response to market changes. Unlike news-like content that is clearly dated or official press-releases and the like, the contents of advertising websites cannot be clearly dated and thus cannot be used to reliably establish a date for information published.

The above should not be understood to imply that only official websites of patent offices around the world have the required standard for the patent office circular (which states that applications for designs submitted in other jurisdictions that are accessible over the internet from Israel are considered as prior art preventing design registration in Israel where, under the current regime from 1924, only local novelty is required – MF) The circular allows other official publications to be relied upon including internet catalogs, and applicant’s websites so long as they enable a clear date to be established. Where the source of the advert is the applicant itself, in a press release or on applicant’s website, the applicant can respond to allegations of prior publication.

The challenge to the Office Action is, therefore, the date and trustworthiness of the advertisement cited by the Examiner as being prior art.

The applicant’s challenge to the Facebook publications cited by the Examiner fall into two categories. The first is that they are not full disclosures in that they do not show the design in full. Applicant submits that the cited publication shows a cupboard or a shoe box and the shoes included are not fully visible. The view is from above and from a distance, and does not teach the design to the extent it is taught in the application itself. The Applicant claims that the Facebook advertisement is not directed to consumers and is inherently different from sales sites that enable to the consumer to select and rotate the image of products displayed. They are inherently different from a catalogue or from a vendor’s website.
A second challenge raised by the Applicant is that the Facebook citations against the second group were first raised in a second office action during reexamination. Thus, with regard to the Facebook citation, we are not concerned so much with the fact of publication as per section 30(1) of the Ordinance, but with the degree of exposure of the design in the advertisements predating the filing date, with respect to their photographic quality.

Publication on General Sales Sites

After examining all the publications in vendors’ websites, the present Commissioner, Asa Kling, declared that the publications are reliable. As to the date of the publication, where this is not included within the advertisement on the website, it is possible to determine this from readers’ feedback which is dated. One can assume that if on a specific date there is a web surfer’s comment on an Internet page regarding a product for sale, that product was on sale at least on the date of the response. The content of the responses leaves no doubt that the products illustrated were those that are under discussion in this ruling.

One has to be careful when relating to Internet publications (see Request for Trademarks 187385 and 187386 (GHI) and the opposition to trademarks 200701 and 200702 (GHI stylized) in Gemology Headquarters International vs. Gemology Institute of America 28 May 2012 (henceforth GHI). In our case, after further consideration of the publications that the Examiner relied upon, it is determined that there is reliable information regarding the publication of the design in the general sales sites. As the inquiry stands up to the warning given earlier with regards to the Tequila case, the burden of proof is on the Applicant to show that the publication relied upon by the Examiner is unreliable and insufficient to serve as prior publication of the requested design.

As stated in GHI, the assumption may be rebutted by an expert opinion of by other means that the publication was not at the time indicated on the site, but the Applicant has failed to bring such proof.

This is similar to citations brought as prior art in patent applications. Of relevance in this regard is the notice from the European Patent Office concerning Internet citation (Official Journal EPO 8-9/2009 (the underlining is by Commissioner Kling):

“Establishing a publication date has two aspects. It must be assessed separately whether a given date is indicated correctly and whether the content in question was indeed made available to the public as of that date. The nature of the internet can make it difficult to establish the actual date on which information was made available to the public: for instance, not all web pages mention when they were published. Also, websites are easily updated yet most do not provide any archive of previously displayed material, nor do they display records which enable members of the public – including examiners – to establish precisely what was published and when…. Finally, it is theoretically possible to manipulate the date and content of an internet disclosure (as it is with traditional documents). However, in view of the sheer size and redundancy of the content available on the internet, it is considered very unlikely that an internet disclosure discovered by an examiner has been manipulated. Consequently, unless there are specific indications to the contrary, the date will be accepted as being correct”.

It is emphasized that as far as the surfers’ comments are concerned, it is evident that the website content was available for a long period, and this is sufficient to remove the novelty of (anticipate) subsequently filed design applications in Israel where there is no reason to assume that a host of readers comments all had their dates changed.

Having ruled that the dates are reliable, there is no dispute that the designs in the Internet website are fully disclosed and this renders the discussion regarding the quality of the Facebook publication moot, as is the question of when the partial publication on Facebook occurred. Thus the website publication of 55271, 55280, 55283 and 55289 is considered sufficient to render the applications unregisterable and the Examiner was correct to refuse them.

Publication on Facebook

There is a further claim that the publication on Facebook was never intended for the consumer. The Commissioner admits that he didn’t understand this claim. The intended recipient of a publication is irrelevant to the fact that there was a publication. The Examiner was correct that the fact the pictures were publicly available is sufficient to destroy the novelty of a subsequently submitted design application. This position is supported by the authors of Russel-Clarke and Howe on Industrial Designs, 8th ed., Sweet & Maxwell (2010), where, on page 13 it is stated:

In general there will be publication if articles to which the design is applied are manufactured, displayed or used in such a way that members of the public will or might see them. It is not necessary that the articles should have been sold. Prior use does not mean use by the public, but use in public as opposed to use in private.

According to the Examiner, the illustrations allow the shoes to be appraised by a visual test, in that the pictures of the featured design may be compared with other designs and what is required is a general appreciation of the design and not all the minor features thereof. The Examiner considered that the Facebook advertisement shows that stylistic elements of all the shoes shown in the illustration in sufficient detail to be novelty destroying.

Section 2 of the Ordinance defines a design as follows:

“Design” does not only mean the outline, shape, example or decoration that makes a mass-produced article distinctive, whether by hand, by machine, by chemical treatment, by a separate shape or an adjoined part, as it appears to the viewer in the finished product, and as can be visually determined. The term design does not include any method or principle or anything else other than a mechanical object.

In Appeal 7125/98 “Miforal Industries Jerusalem vs. Klil Industries LTD 57(3) 702 Nevo 8 May 2003, in paragraph 10 of the ruling this is explained:

The correct comparison needs to be made by comparing the general impression that a design makes on the eye of the relevant consumer. The emphasis is on the general impression from the article considered in its entirety., where the assumption is that the consumer does not have an experts attention to detail, but is also more interested that a passer-by Appeal 1187/94 Sela Concrete Devices LTD vs. Ackerstein Industries LTD [8] 291.

Thus in many fields, a design will be examined in its entirety rather than being analyzed into constituent elements. See  Patent Office ruling concerning designs 22424, 22433, 22783, 23767 Klil Industries LTD of 7 August 1997

By applying the general visual appearance test of the Ordinance as fleshed out in the case-law, the question in our case is whether the normal consumer exposed to a picture in an advertisement on Facebook would be sufficiently impressed by the general appearance that he would identify the shoes for which design applications were filed. The Commissioner considers this unlikely.

The nature of the Facebook advertisement is high-resolution coloured photographs. However, the photos show some of the shoes almost in their entirety and others are only partially visible. The soles of none of the shoes are visible.

As the Applicant noted, viewing the photographs on Facebook is insufficient to give a feel for the whole shoe, since each show is only shown from one specific angle which is a general front birds-eye view. The photos do not show the design elements of each shoe, such as decorative elements in detail. As the Applicant explained, apart from the question of the intention of the advertisement, the publication of the shoes in these advertising photographs is not the same as their display on a website showing all angles.

Furthermore, with respect to the articles under discussion,one cannot deny that the heel of a shoe is a significant design consideration. For many of the shoes shown, the heel is not illustrated, nor is the view from behind, which is of significance to the purchaser as will be detailed hereinbelow.

For example, with reference to design application number 55288,  the Facebook illustration does not show the heel engaging straps of the shoe, but only the front upper section.

With reference to Application Number 55279, the Facebook photograph leaves a difficulty in determining whether the shoe is a high-heeled shoe or a platform shoe. There is also a difficulty in understanding the internal profile of the shoe which is clear from the figures submitted. The show of design application number 55291 is not clear from the Facebook image which does not show clearly if the shoe has a high heel or not, and what the back-of-heel straps look like. These are, however, clear from the images of the application as filed.

Application 55270 is shown on Facebook, but the position of the back-of-heel strap and of other elements such as floral decorations is not clear. Thus it appears that the Facebook images do not reveal the design in its entirety.

Applications 25280, 55283, 55289, 55291 and 55271 are not clearly shown on Facebook.

In conclusion, Application numbers 55288, 55291, 55270 and 55279 were rejected whilst Applications 25280, 55283, 55289, 55291 and 55271 were allowed to be registered, (as noted previously 55278 was abandoned prior to the hearing).

Ruling by Commissioner Kling concerning various shoe design applications submitted by Naalei Nayot, 1 June 2016.

COMMENT

This ruling provides much needed clarification regarding to what extent a design shown in a photograph on an Internet website is novelty destroying. However, I respectfully submit that the commissioner is wrong in this case. (Actually that’s not strictly true. The Commissioner is right by definition. It is only a court ruling that can over-turn his decision. What I mean is that I think that the standard for an image to be novelty destroying should not be the same as for registering a design. A registration should include front, back, left, right, top and bottom plan views, and also a perspective view. I think that an earlier publication of a view that observers see should be adequate to anticipate a design application and to render it non-registerable.

After the Christian Loboton case, I understand that some people choose shoes because they have a particular colour sole and are willing to pay a premium for this. Actually this isn’t true. Some people are willing to pay more for a particular designer’s products, and will accept red soles as a distinguishing trademark. Clearly the arrangement of grips and studs on the soles of sports shoes have a purpose, and whether the ankle is strapped in or not is also of some interest, but, like the height of a heel, it is functional. Women wear high heels to look taller (yes I’ve also seen Kinky Boots and accept that they also cause the buttocks to clench sexily). Essentially heel size is functional. I think that people primarily choose the aesthetic elements of a shoe design based on the impression it provides to someone looking down from in front. It is for precisely this reason that the Facebook adverts show the shoe from this perspective.  A good design will be available for different sports with different grips on the sole and, I suspect, will be available in low, medium and high heel options. Furthermore, whether a shoe has high heels or not is usually visible from a raised front view.

Without viewing the particular images and the specific shoe designs it is difficult to challenge the Commissioner’s ruling, but I am skeptical.  I think that Former Deputy Commissioner Smulevezh was correct in the Ackerstein kerb-stone decision to rule that one views kerb-stones from the top and front and thus a publication not showing the underside and back surfaces is still a publication. I think this should apply to shoes as well; most people wear them on their feet at ground level. They chose shoes to compliment outfits based on what the shoes look like from a bird’s-eye view from the front. This is not a bird’s-eye view at all. It’s the view that others, and indeed the wearer himself / herself see.

I can accept that a purchaser may be interested in what the inside of a shoe looks like, but I do not consider this to be part of the aesthetic design protected by a design registration. Shoes are designed to be worn. When worn on a foot, the inside design features of a shoe are hidden, as is the sole.  I would expect Naalei Naot to complain about competitors making shoes that are otherwise identical except viewed from underneath or when considering the inside. This is why they register designs. An otherwise identical shoe to one that is registered design, that is differentiated by having a tartan lining and a manufacturer’s signature written on the part of the sole connected to the heel that does not get appreciable wear, should, in my opinion, be considered infringing.

1 Comment | design, designs, Intellectual Property, israel design ruling, Israel IP, Israel Patent Agency, Israel Patent Office, Israel Patent Office Rulings, Israel Related, novelty, obviousness, Uncategorized, החלטת רשות הפטנטים, מדגם, עיצוב, קניין רוחני, קנין רוחני | Permalink
Posted by Dr Michael Factor

Shabbat Lifts Not for the Public Good

July 18, 2016

 

shabbat liftG.L. Glatt Lift Company Ltd. filed a patent application for a Shabbat Lift; an elevator that may be used on the Jewish Sabbath without transgression of the holy day. (The term Glatt relates to a standard for Kosher beef that the generally accepted Ashkenazi authorities consider a stringency. By transference, the term implies super-Kosher, or something similar. Many Jewish authorities allow usage of a lift that stops automatically, or riding in a lift in a hospital or similar if someone assumed to be non-Jewish operates it for their benefit. Other authorities are stricter. More discussion on this is given at the end of this article).

Maalit ShabbatIn this instance, the Applicants have filed a patent for a technological Hallachic solution that is allegedly novel and inventive and that is claimed to overcome the reservations of those Hallachic authorities that do not allow usage of the type of ‘Shabbat Lifts’ that are common in apartment blocks with religious residents.

Israel Patent Application No. IL 221842 titled “Shabbat Lift” was submitted on 9 September 2012. The application claims priority from a US provisional application number 61/533,244 that was filed on 11 September 2011, and a corresponding PCT application, No PCT/IB2012/054604 was also filed.

On 13 October 2015, the Applicants received a Notice Prior to Examination to which they responded on 1 February 2016 with a list of prior art. The submission of a response to the Notice Prior to Examination creates a state of affairs by which the application is ready for examination (see section 5.3 of the Examination Procedure for Examiners).

On 1 February 2016 the Applicant also submitted a request for accelerated examination, which is a petition to make special. The justification for the request was that awarding the patent was in the public interest.

The Applicant claimed that the lack of appropriate Shabbat lifts prevented high-rise accommodation for the Ultra-Orthodox and the proposed solution would overcome this barrier. The Applicant considered that his invention would facilitate high-rise Ultra-Orthodox accommodation and thereby minimize land usage (by increasing the population density) and would thereby lower building costs.The solution would also make life easier for the ill, the elderly and children who could not use elevators on Shabbat. Various articles regarding the lack of accommodation for the Ultra-Orthodox were appended.

The statement was not specific, but it appears that the legal support was claimed from Section 19a (v) and (vi) that state that:

An applicant for accelerated examination with reasonable arguments may submit a reasoned request, together with a statement supporting the facts; all of the following, inter alia, may be considered reasonable justification:

(5) common good;

(6) special justifying circumstances.

Generally patents are examined in turn so ‘first come, first served’ as per Section 9 of the Patent Law:

If more than one applicant request a patent for the same invention, he that first applied will prevail. 

The order of examination is generally on a ‘first come, first served’ basis as per Section 34a of the regulations:

34a the applications will be allocated to each internal classification group and within each classification group, will be examined in turn. 

Examination in turn both facilitates Section 9 and also ensures that relevant prior art is available to the Examiner. The first come, first served regime is itself in the public interest – See ruling re Petition to make special Israel Patent Application no. IL 216870 to Cimas Limited, 24 March 2014.

The possibility for making an application special is an exception to the general rule. It undermines the principle of ‘first come first served’, makes the examination more difficult and arguably damages the quality of the examination.  For example, a queue-jumping application may be examined and allowed without realizing that an earlier filed application that was not examined challenges the novelty or inventiveness of the claims. Any fast-tracking results in other applications being delayed and is thus against the public interest.

Fast-tracking risks unfairness, but the legislators allow it under circumstances detailed in Section 19a of the Law where there is an over-riding public interest or special circumstances. Section 19a was legislated in the 10th amendment to the patent law that came into effect on 12 July 2012. From examination of the discussion at the committee state it is clear that the Commissioner has the discretion to explain the law. It is clear that the type of justification that is acceptable is extreme circumstances. For example: there could be circumstances that a dramatic discovery is like an earthquake and is positive for the State of Israel. Isaak Herzog, Knesset legislative committee discussion of 13 March 2012.

The justifications listed in Section 19a were actually those for third parties to request an application be fast-tracked but there is no reason to suppose that they are not applicable to requests by the Applicant himself. Nevertheless it appears that what the legislators intended was something of interest to the entire population as of national interest for the whole population and not for micro-economic interests of one sector or another. There is an underlying assumption of public interest in all patents. The only justification for ever granting a patent (i.e. a monopoly, albeit limited in time and geographical application) is that there is a national interest in micro-economic profits and technological progress.

No-one challenges the fact that each patent provides a different public interest depending on the type of invention and its application. There is no clear economic or social scale that can be used to rank different patents. However the same term is generally understood in the same manner in different legislation to provide coherency (see Aharon Barak, Volume 2, Legislative Interpretation, Nevo 1993 pages 313 and 321. Thus the term “common good” in Section 19a of the patent law is a priori similar to the term in Section 122 which discusses forced licenses. Section 122 states:

The Commissioner, where he comes to consider the request for a compulsory license under Section 117 should consider, inter alia:….

….

(2) the common good generally obliges that all inventions should provide the protected goods by manufacturing or import, so enable widest possible supply in the circumstances, without delay.. 

The District Court ruled in 881/94 Eli Lilly and Company vs. TEVA Pharmaceuticals LTD 25 November 1998:

In the field of patents, the common interest is the main and dominant cause for determining balances and rights. There may be a specific basis for worrying for private interest of the specific owners, and a patent an be considered as a reward that the legislators bestows on the entrepreneur. But the main justification of the patent system is the public considerations of utility and profit that affect the community taken as a whole. Whilst it is true that a patent provides protection to an individual, the existence of the right and its extent are determined by how much they fulfill the public interest. In this regard a patent is like a compulsory license. In both cases a personal right is provided to an individual but the underlying rationale for granting the rights is the common good. Just as the compulsory license is not granted for the benefit of the applicant, similarly a patent is only granted to the owners because it is in the public interest. It is not a balance between private rights and the public interest, but rather a balance between different public interests that together define the common good.

Thus the common good in this instance, as with compulsory licenses, is the result of balancing different public interests. Where the Applicant desires to depart from the general balance of interests including the principle of ‘first come first served’, the justification for jumping the queue has to be something weighty of significance to the wider public or a positive macro economic effect.

Furthermore, from when the application is filed until it eventually issues as a patent, there is nothing preventing the applicant from implementing the invention described in the patent application, enabling the public to benefit immediately. The enforcement of a patent is of economic interest to the patentee only. First tracking is not in the public interest at all. It only serves the applicant.

Without addressing the issue of patentability at all at this stage, the Commissioner does not thing that the present invention is more ‘public good’ than other inventions and, as the applicant himself testified, it serves a specific population segment only. The petition to make special did not include any economic calculation to show why it was justified.

Although the above arguments relate to the ‘public good’ they are equally applicable to the ‘special reasons justifying advancing the examination’. Consequently the application for fast-tracking is rejected and the application will be examined in turn.

Ruling by Commissioner Asa Kling Concerning Making Special Israel Patent Application Number IL 221842 to Glatt Lifts LTD., 14 June 2016 

COMMENTS

Very few inventions positively affect everyone. If something could help 10% of the population, it seems to me that it should be considered of significance, whether the population is women, AIDS sufferers, people living near the Gazan border, parents of small children or the Ultra-Orthodox. I don’t see any reason why common good should be interpreted as of value to people across the population without regard to race, age, religion, religiosity or sexual orientation.

The underlying presumption of the Applicant is that conventional elevators do more electrical work for each passenger riding in the elevator and that this is against the laws of Shabbat to rely on Shabbat settings on lists. If this assumption is true, it affects all Jews and most of Israel’s population is Jewish. Even if many Jews are not Observant, and many more are not persuaded that using currently available Shabbat lifts are not acceptable I suspect that from the Applicant’s perspective, Shabbat observance is of value and desecration is problematic regardless of the religious philosophy of the Jew in question. It may be what’s preventing the Messiah from coming. Furthermore, the State of Israel accepts the principle of Shabbat observance as being of national interest by not allowing trading on Shabbat and by not having Shabbat desecration by the Head of State, ambassadors, etc. and by requiring Shabbat observance on army bases apart from where security considerations take precedence.

For more details of the ruling (wrongly???) attributed to Rav Elyashiv, see here. See also a report in the Yeshiva World (sic) and one from the UK’s Daily Telegraph. Rabbi Yisrael Rozen’s ruling allowing both ascending and descending in Shabbat Elevators and listing what modifications are required to enable an elevator to be used on Shabbat may be found here (Tchumin 5, 75; see also article by Professor Lev in same volume, page 58).

I took the liberty of reviewing IL 221842 to Glatt Lifts LTD and its claims. If I was examining it for patentability, I would disallow it as not being enabled. It may be enabled from the perspective of the Hallachic problem it is trying to solve, but in my opinion, it does not provide a solution that enables a person of the art to go away and build a working lift without undue experimentation which is the standard for which patent applications are judged.

2 Comments | accelerated examination, claims, enablement, Intellectual Property, Israel IP, Israel Patent, Israel Patent Agency, Israel Patent Office, Israel Patent Office Rulings, Israel Related, Jewish, patentable subject matter, Patents, Uncategorized, החלטת רשות הפטנטים, פטנט, פטנטים, קניין רוחני, קנין רוחני | Permalink
Posted by Dr Michael Factor

Israel Commissioner Vindicated by Supreme Court

June 22, 2016

appealMerck & Co. LTD is the exclusive licensee of IL 110956 for Ezetimibe owned by Schering Corporation. The patent protects the active agent Ezetimibe as found in the pharmaceutical Ezetrol, or Zetia, which reduces the amount of cholesterol in the human body. The original 20 month patent term lapsed on 13 September 2014. However, on 22 September 2005 the patentee received a patent term extension until 23 June 2017. Later however, in September 2014, following a submission by the Association of Industrialists in Israel, the Commissioner of Patents, Assa Kling, ruled that the patent term extension for IL 110956 for Ezetimibe be shortened until 22 January 2016 on the basis of the subsequently issued, shorter patent term extension of the corresponding US patent, and awarded costs of 40,000 Shekels from Merk to the Association of Industrialists.

constitutionalMerck, represented by Liad Whatstein, appealed the ruling, using arguments that failed to persuade the Commissioner, including that the law itself was unconstitutional since it destroyed property rights which were recognized in basic laws (section 8 of the Basic Law of Human Dignity and Freedom. 1980. Furthermore, the fact that the subsequent amendment to this section is not retroactive supports the allegation of lack of constitutionality.

In Appeal number 5407-11-14, the Jerusalem District Court upheld the constitutionality of the Law but recalculated the extension until October 2016 based on the duration of the corresponding German patent.  On 11 April 2014, a tribunal of Supreme Court Judges Danziger, Hendel and Shaham heard an Appeal by Merck on the constitution issue, and one by the Association of Industrialists in Israel wanting the shorter term calculated by the Commissioner to be restored. The Association of Industrialists in Israel were represented by Adv. Tal Band, and the Legal Counsel to the Govt. Ms Shimrit Golan joined the Appeal on behalf of the government.

On Appeal Judge Hendel of the Israel Supreme Court reviewed and justified the various amendments and ruled that shortening the period of a previously ruled Israel Patent Extension Order during the 20 year pendency of the original patent was constitutionally sound, as was doing it on the basis of a subsequently issued shorter protection period from a recognized country.  Judge Handel painstakingly but beautifully explained the background to the patent term extension legislation and why it was filling to link Israeli extension periods on those granted abroad. He jsutified the extension regime which is an exception to patent norms, and threw out Merck’s argument. The rigorous analysis was concluded by a section on comparative law where Judge Handel first related to Mishpat Ivri (Jewish Civil Law) and showed that there were echos of intellectual property rights in the Talmud, and that scholars of the 19th to 21st centuries related to patent law. He argued that the Jewish tradition recognises both quasi-property rights in inventions and creative activity but frowns upon tradesecrets, particularly with respect to pharmaceuticals, noting the case of Rabbi Yohanan a handsome scholar that lived in Zipporis in the Galilee who contracted scurvy, and then broke the trust of a roman matron that cured him, revealing the cure in his sermon, because of the public interest. The analysis of the Jewish sources was masterful. Then Judge Hendel briefly reviewed the US law and its developments, concluded that the US and Israel were both trying to create a fitting balance between the needs of the drug developers to benefit from a real period of protection after obtaining regulatory approval to enable them to sell their drugs at a premium and recoup their investment, and the needs of local generic drug companies to be able to compete with their foreign counterparts but them being able to conduct acts required to obtain regulatory approval during the extension period. Judge Handel noted that there was public interest in encouraging drug development by pharmaceutical companies who had to make enormous investments to bring new treatments to the market. However, there was also significant public interest in widespread and affordable drugs.

Merck’s appeal was rejected by Judge Handel and Judges Danziger and Shaham concurred without comment. Judge Handel noted that were Merck NOT to have appealed, the Appeal by the industrialists on the District Court’s actual calculation would not have been heard, so Merck’s second appeal actually resulted in a shorter patent term extension than they would have received otherwise.

I consider this ruling objectively important and very well written. Due to the significance of the issues raised, I have translated the entire ruling to make it available to non-Hebrew speakers, noting that computer translations were of little value. I have posted the full translation below the following page break as a public service. I have not used the term ‘ethical’ which Judge Handel used to refer to the drug developing countries, and occasionally have not translated idioms, or used an English language metaphor where it appears to be appropriate. The illustrations to the ruling are my contribution. I think they liven things up a bit. If you find them distracting, adjust your settings to view text only! Please note, translating this took a few days and I put billable work aside to the chagrin of various clients. I would appreciate that anyone using this translation has the decency to attribute and to link to this blog.

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Posted by Dr Michael Factor

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