Retroactive Extension Granted for Reporting a Lecture Disclosing a Patent Application Prior to Filing

October 10, 2017

Background

retroactivePatentability requires that a patent is novel, inventive and useful at the priority date, which is the effective filing date.

The Novelty requirement is absolute, but there are three exceptions given in Section 6 of the Israel Patent Law 1967:

  1. A publication of the invention without consent of the patentee is not novelty destroying, provided that patentee files an patent application promptly on learning about the publication;
  2. Display at a exhibition is not novelty destroying, provided a patent application is filed within six months;
  3. A scientific lecture is not novelty destroying, , provided the registrar was given advanced warning and a patent application is filed within six months.

Section 164 gives the Registrar (Commissioner) wide discretionary powers to extend missed deadlines.

In this ruling, the Deputy Commissioner considers whether the advanced warning of Section 6(3) can be extended retroactively under the discretionary powers given by Section 164, i.e. if the Applicant can inform the Commissioner of a scientific lecture post facto and pay extension fees, so that the lecture by the inventor is not considered as novelty destroying prior art.

The Case

Japan flagOn 6 March 2012, Otsuka Pharmaceutical Co. Ltd. filed Israel Patent Application Number 218495 as a National Phase Entry of PCT/JP2010/053032 titled “Therapeutic Agent for Chronic Pain” that was itself filed on 26 February 2010. The PCT application claimed priority from JP 2009-211021 filed on 11 September 2009.

On 27 August 2009, i.e. before the priority date, the “Conference Proceedings of the 69th Tohoku District Meeting of the Japanese Society of Psychosomatic Medicine” were published. One of these was titled  “An example of complete response of ariprazole against refractory head and neck pain associated with depression”.

A significant amount of the scientific work that was the basis of the patent application and of the conference paper was disclosed in a lecture on 12 September 2009. The Patentee claims that the PCT application was filed within six months of the abstract, and claims priority from the priority application and so the PCT application benefits from the grace period under Section 30 of the Japanese Patent Law.

On 22 July 2010, prior to entering the national stage in Israel, the Agent for Applicant requested an extension to the deadline of Section 6(3). The Head of the PCT Department refused this, since the notification of the publication was not provided in advance, and he considered that only time limits given in the Law can be extended.

On 15 August 2010, the Applicant responded that they would file a second request on entering the national stage into Israel and would provide written and verbal arguments justifying an exception, and, on 16 May 2011, a further notice refusing the extension was issued by the patent office.

On subsequently entering the National Phase into Israel, and with reference to Section 48D(a) of the Law, the Applicant noted that, prior to entering the national phase into Israel, they had requested an extension to Section 6(3), and appended the decision of 16 May 2011.

During the Examination, the abstract from 27 August 2009 was cited against the claimed invention as being novelty destroying. Consequently, the Applicant requested a hearing to discuss whether the Section 6(3) deadline is extendible and, if so, whether the circumstances in question justify the Commissioner retroactively extending the deadline under section 164.

Discussion

Sections 6 and 164 are reproduced below:

  1. The right of the owner of an invention to be granted a patent shall not be affected by publication said in section 4—

(1) if it is proved that the matter published was obtained from him the owner of the invention or his predecessor in title and was published without his consent, and if the patent application was filed within a reasonable time after the publication became known to the applicant; or

(2)(a) the publication was by the owner of the invention or his predecessor in title in one of the following ways:

(i) display at an industrial or agricultural exhibition in Israel or at a recognized exhibition in one of the Convention States, of which official notice was given to the Registrar before its opening;

(ii) publication of a description of the invention at the time of a said exhibition;

(iii) use of the invention for the purposes of the exhibition and at the place of the exhibition;

(b) the publication was by use of the invention, even without its owners’ consent, at the time of the exhibition, at the place of the exhibition or outside it, on condition that the patent application was submitted within six months after the exhibition opened;

(3) publication was by way of a lecture by the inventor before a scientific society or by publication of the lecture in official transactions of the society, on condition that the Registrar was given notice of the lecture before it was delivered and that the patent application is filed within six months after the aforesaid publication.

Section 6(3) lists three conditions, that if fulfilled, render the prior publication as not damaging to the patentability of the patent. The first condition relates to the nature of the publication and to the reasons for it happening. In this instance, it relates to a lecture by the inventor before a scientific society or the publication of the lecture in the formal society conference proceedings. There is no doubt that the publication in question fulfills these conditions.

The third condition relates to the period from which the publication occurs and the date of filing of the patent. The proceedings were published on 27 August 2009, and the international publication was on the 26 February 2010. The Applicant claims that one should see the date of filing of the PCT Application designating Israel, as being the date as far as Section 6(3) is concerned. The Deputy Commissioner, Ms Jacqueline Bracha considers that the Applicant is correct in this regard.

Section 48(c) of the Law is an exception to Section 15 that states that a PCT Application designating Israel, receives a date as per the PCT Convention:

48C. The provisions of this Law shall apply to applications addressed to Israel, with the changes specified in this Chapter and with the changes specified below:

(1) the provisions of sections 11, 14, 15, 17(a) and 20 shall not apply;

(2) the provisions of section 16 shall apply to an application, in respect of which the applicant met the conditions prescribed in section 48D;

(3) the date of the application shall be determined in accordance with the provisions of the Convention;

(4) the provisions of section 165(a) shall not apply to information published under the Convention in respect of applications;

(5) notwithstanding the provisions of section 168(a), documents published according to the Convention in respect of applications shall be open for public inspection.

In accordance with Section 11(3) of the PCT Conventions, the filing date of the PCT application is considered as the National Entry Date in all designated states:

(3)  Subject to Article 64(4), any international application fulfilling the requirements listed in items (i) to (iii) of paragraph (1) and accorded an international filing date shall have the effect of a regular national application in each designated State as of the international filing date, which date shall be considered to be the actual filing date in each designated State.”

In light of this, the effective filing date in Israel is the filing date of the PCT Application designating Israel, and so the Applicant has fulfilled Section 6(3) of the Law.

The Applicant does not dispute that he did not fulfill the second condition requiring informing the Commissioner of the lecture before it happened. However, he alleges that it is within the Commissioner’s Authority to extend this deadline using the powers granted to him under Section 164 of the Law.

Patent Deadlines are generally extendible, apart from the deadline for filing an opposition, the deadline at which a patent lapses (but can be restored), the grace period for renewals, and deadlines relating to patent term extensions. Other than these, the Registrar (Commissioner) has wide discretion to grant extensions. This is clear from Section 164 of the Law, repeated below:

164.—(a) The Registrar may, if he sees reasonable cause for doing so, extend any time prescribed by this Law or by regulations under it for the performance of anything at the Office or before the Registrar, except for the times prescribed in sections 30, 56, 57, 61, 64F, 64M; however, for purposes of section 10—

(1) the Registrar shall not extend the time prescribed by subsection (a)(1), unless he is satisfied that the application in Israel was not submitted on time because of circumstances over which the applicant and his representative had no control and which could not be prevented;

(2) the Registrar shall extend the time prescribed by subsection (a)(2) only as long as the application has not yet been accepted and if he is satisfied that a mistake was made innocently.

(3)The Registrar may make the extension of times conditional on conditions as he deems fit.

(c) An application for extension of a time may be submitted within the time or after it.

(d)Notwithstanding the provisions of subsections (a) and (b) and the provisions of any other Law, if the last day of the period prescribed in section 10(a)(1) falls on a .day that is not a work day, then the period shall end on the first work day thereafter; this provisions does not derogate from the power to extend beyond the time prescribed in section 10(a)(1).

The Examiner considered that this condition is not a deadline that can be extended and so the Commissioner does not have jurisdiction under Section 164.

The Deputy Commissioner notes that as far as the publication in question is concerned, the Applicant acted in good faith opposite the Patent Office. Firstly, even before entering the national phase the Applicant requested an extension to inform the patent office, when filing, he noted the request on the Application form and listed the reference in the list of disclosed prior art in accordance with the duty of disclosure under Section 18 of the Law. When discussing the requirement in the hearing, the question arose as to whether the Applicant should have appealed Dr Bart’s ruling. Perhaps the Applicant should have Appealed under Section 161 but the Deputy Commissioner does not consider it too late to discuss the issue substantively, nor does she consider the failure to appeal as being inequitable behavior.

The main issue under discussion, is whether the requirement to provide advanced knowledge of a publication is a deadline that can be retroactively extended under section 161, i.e. whether this is an exception to the rule.

To answer this question, it appears appropriate to consider the underlying purpose of the condition and its source. Section 11 of the Paris Convention for the Protection of Intellectual Property 1883 states that the signatory states should provide temporary protection for a period not exceeding that defined in section 4 of the Convention (grace period) for displaying an invention or design at an official exhibition. Indeed, allowing exhibited goods to be protected was one of the aims of the convention:

“(a) Since lack or inadequacy of protection of industrial property at international exhibitions was one of the reasons which promoted the conclusion of the Convention, it is natural that the principle of such protection should already have been included in the original text of the Convention of 1883. It was then the intention to oblige the member States to take necessary legislative measures to that effect but to leave them free in determining the ways and means of achieving this end.”

GHC Bodenhausen Guide to the Application of the Paris Convention for the Protection of Industrial Property, as Revised at Stockholm in 1967 (1968) page 149.

Since the individual states had wide discretion regarding their national legislation and the administrative requirements for obtaining this protection, the basis for the pre-exhibition notice, which is largely unique to Israel, is not part of the convention itself. Additionally, examination of the pre legislative proposed law does not provide an explanation.

The Law in many jurisdictions does not require a pre Exhibition notice of intent to exhibit to be submitted to the patent office. The Japanese Patent Office requires sub mission of the patent application together with a notice within six months of the exhibition. (See Hiroya Kawaguchi “The Essentials of Japanese Patent Law” (2007) p. 31.

A similar requirement for submitting a the notice of an exhibition together with the application is found in Section 55 of the European Patent Convention:

“(1) For the application of Article 54, a disclosure of the invention shall not be taken into consideration if it occurred no earlier than six months preceding the filing of the European patent application and if it was due to, or in consequence of:

(a) an evident abuse in relation to the applicant or his legal predecessor, or

(b) the fact that the applicant or his legal predecessor has displayed the invention at an official, or officially recognized, international exhibition falling within the terms of the Convention on international exhibitions signed at Paris on 22 November 1928 and last revised on 30 November 1972.

(2) In the case of paragraph 1(b), paragraph 1 shall apply only if the applicant states, when filing the European patent application, that the invention has been so displayed and files a supporting certificate within the time limit and under the conditions laid down in the Implementing Regulations.”

In the US, the exhibition of the invention is part of the one year general grace period for inventor disclosures – See §35 US Section 102b of the US Patent Law and Daniel J. Gervais International Intellectual Property: A Handbook of Contemporary Research (2015) p.45.

From here it is clear that the Israel Law is somewhat unique in requiring prior notification. In light of the difference between the Laws and the legislative being silent regarding whether or not this period can be extended, the question of the interest that the Israel Law intended to protect by requiring prior notification of exhibition or lecture becomes important.

There are three possible purposes that come to mind.

  1. One possibility is to protect the inventor who, prior to exhibiting or lecturing, must determine that the exhibit or lecture will not damage his future protection. By providing notification, the Commissioner can obtain the disclosure and will be reminded of the Section 6 exception. If the inventor does not receive the authorization to exhibit, he can quickly file an Application before the publication. This paternalistic rationale, even if a positive thing, is somewhat exceptional on the IP horizon.
  2. Another possible purpose is certainty of the public regarding whether a prior disclosure is legally and not merely factually novelty disclosing or not. In other words, the public wishes to know as early as possible, if an invention is to be patent protected or if it is in the public domain. Even if this is an appropriate aim, it is not achieved by the requirement for earlier registration under section 6(3) of the Law, since such notification is not known to the public prior to the patent application becoming available for public inspection 18 months after filing (and until fairly recently, only on allowance). At the time that the patent file wrapper is available for inspection, it makes no difference if the Patent Office was informed of the exhibition or lecture in advance or after the event. Thus the public reliance on publication is different from the reliance on national phase entry which interested parties can and do follow, see for example, 23511-05-12 Mindcake LLC vs. Israel Commissioner of Patents and Trademarks, 17 January 2013:

Thus, the extension of the national phase entry deadline is a matter of significance, since when this date passes, the invention is immediately transferred from the patentee to the public domain, who is allowed to make use of the invention according to their will.

In this instance, we cannot assume that this reliance is relevant since the public learn about the exhibition approval long after it has issued, so long as it is before the patent wrapper itself is open for inspection.

3.A third aim might be to provide the Commissioner with the tools to determine whether a prior art publication is indeed at a scientific or recognized exhibition or not. For such an aim, the Deputy Commissioner does not consider that prior notice makes much difference. The onus is on the patentee to convince the Commissioner, who is not required to make investigations. So in cases where the Applicant is unable to convince the Commissioner that the exhibition should not be novelty destroying, his request will be refused. From here it is clear that any evidentiary problems will work against the Applicant and we therefore return to the first suggestion that the purpose is to protect the Applicant.

This is not the first time that the Court of the Patent Office has considered this issue. In re IL 68447 to Byong Wha Suh (published on 29 February 1984), the Commissioner was petitioned to extend the Section 6 time-frame. After considering the European Patent Law, the Commissioner reasoned that one could indeed extend the deadline for informing the ILPO and reasoned as follows:

“We state immediately that in our Opinion, section 164a of the Israel Patent Law is sufficiently broad to allow the Section 6(2)(a)(1) deadline to be extended.
The Section allows deadlines that are stated in the Patent Law or the Regulations to be extended, and the wording is not limited to procedural deadlines (such as the deadlines for filing and responding in contentious proceedings), but also allows extensions of deadlines that can affect the validity of a patent. This can be learned from the wording of Section 164 which specifically excludes extending deadlines for paying renewal fees for lapsed patents. This teaches that the legislative body did not see fit to prohibit other deadlines being extended at the Commissioner’s discretion.

It is true that there is no positive reference to Section 6(3) in Section 164 of the Law. Section 164 does, however, allow the Commissioner to retroactively allow extensions. The Applicant is correct in his claim that “so long as the Commissioner receives notification of the lecture before it is given” relates to time limits, even if not explicitly. It is also clear that this time passes with the lecture and so any time thereafter misses the stated deadline for the action.

To the extent that the advanced deadline is paternalistic, prohibiting extending the time limit will not enable the intent to be achieved. From here, the Deputy Commissioner deduces that the Commissioner (and by transfer of powers, she herself) has the authorization to extend the time limit.

It is true that the Commissioner has wide discretionary powers under Section 164, the extent of which changes with circumstances. Application of Section 164(a) to give a retroactive extension will be depend on the nature of the process, the specific circumstances, and the weighing up of the Applicant’s interest and the public’s interest. See Appeal 2826/04 Recordati Ireland Ltd vs. Commissioner of Patents, 28 October 2004.

Section 164 of the Law, cited above, that allows the Commissioner to extend deadlines, does not extend to all of the dictates of the Patent Law (for details of the things that the Commissioner does not have discretion to extend deadlines, see Friedman page 172-178). In this instance, the Court of First Instance correctly noted that the Commissioner can extend deadlines before or after they pass, as stated in section 164(c), so long as he sees a reasonable justification for so doing, but the issue is not one of legal authority, but rather of the correct use of that authority. In Appeal 248/95 Fabio Perini S.P.A v. Industrie Meccaniche Alberto Consani S.P.A., Judge Winograd considered the correct interpretation of Section 164 of the Law (in the original version prior to the third amendment). The Court supported the liberal interpretation granting extensions for filing Oppositions, stating that Opposer serves the public interest and the integrity of the Register, and not merely his own interest by filing Oppositions, and the range of things that the Commissioner is allowed to extend is wide.

As ruled in the IL 110548 Opposition Shmuel Sadovski vs. Hugla Kimberly Marketing Ltd. (12 August 2010), the relevant considerations for deciding that a justification is reasonable is the extent of the delay and the explanation for it. The extent of the delay can affect not just the perceived behavior of the Applicant and whether it is reasonable, but also whether the public can be considered to have relied on that behavior.

In this instance, the Applicant first approached the committee with explanations that do not seem unreasonable. The difference between the Israel Patent Law and that in Japan and many other countries goes a long way to justify the mistake made. Indeed, the Applicant made a submission via their attorneys, prior to entering the national phase so as to address the issue as early as possible. As to third parties relying on the delay, it does not seem that this can be construed as being in any way connected to them not contacting the Patent Office prior to the lecture, as explained hereinabove.

Nevertheless, this ruling is given ex-partes at the request of the Applicant, without the public being represented, and at this stage third parties do not have standing. Third party standing will only occur if and when the patent is allowed. In light of the above, the Deputy Commissioner rules that the application can continue to examination without the prior publication in the form of the lecture acting as novelty destroying prior art, using discretion under Section 164 (b) of the law which states “The Commissioner is authorized to extend deadlines as he sees fit”.

Conclusion

The request is accepted and the deadline for informing the patent office is retroactively extended on condition that a fee be paid from the time of the publication of the Application having been filed on 27 August 2009, until the national phase entry into Israel on 6 March 2012. It is noted that the submitted notice that informed the patent office of the prior disclosure was rejected by the Examiner, and the Applicant could have appealed that decision within 30 days, so extension fees would anyway be due.

The retroactive extension is granted contingent on any Oppositions submitted after allowance being considered on their merit, with the issue of this extension being considered legitimate grounds for inter-partes challenge.

Ruling by Ms Jacqueline Bracha re Section 6 publication of IL 218495, 24 September 2017


Isscar Opposes Hanita Patent for Milling Tool

June 15, 2017

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

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

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

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

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

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

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

RULING

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

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

Novelty

Section 4 defines the novelty requirement as follows.

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

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

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

Hughes also states that:

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

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

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

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

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

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

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

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

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

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

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

Mr Hina responded No.

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

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

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

Inventive Step

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

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

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

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

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

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

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

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

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

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

Further on (paragraph 51):

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

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

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

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

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

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

Specific cutting angles are given for the various grooves.

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

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

Publication F10

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

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

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

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

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

F133

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

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

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

Thus the Application lacks inventive step.

Adequate Disclosure

Section 13a of the Law states that:

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

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

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

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

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

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

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

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

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

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

Conclusion

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

COMMENT

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

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


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,

 


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 »


Squaring the Circle and Regulating the IP Profession in Israel

March 24, 2017

I was privileged to participate in a ’round table’ at the Israel Patent Office on Tuesday, on the topic of regulating the Patent Attorney profession. In this article I am going to refer to people without giving their titles such as Dr, Adv. and Patent Attorney, since most people were entitled to two or three such terms, but some aren’t and I don’t want to misrepresent anyone.

Perhaps instead of round table, Quad or Quod would be a better term as there was no table in evidence, and the chairs were laid out in a square, with the Commissioner Asa Kling, Assistant Commissioner Jacqueline Bracha and a legal liaison person from the Ministry of Justice along one side; the  various patent attorneys and the odd lawyer present, being arranged along the other three sides in an open ח shape.

basic instinctThe lack of a table and the open square was, in my case, a little distracting, as opposite me was a peroxide blond streaked patent attorney in a dress with slits up both sides who kept crossing her legs and seemed to be appealing to my Basic Instinct.

Kfir Luzzatto was looking younger than ever, and seemed to have restored his hair by self-hypnosis and meditation. I was thinking that his wife Etty was looking young enough to be his daughter and must also be using self-hypnosis and meditation, and then realized that it was his daughter, Michal, who is the fifth generation of this family firm.

There was a healthy sprinkling of sole-practitioners and senior partners of smaller offices, including Ed Langer, Daniel Feigelston, Simon Kahn, David Agranot, myself, Sinai Yarus and Erez Gur.

There was a number of representatives of Reinhold Cohn including Ronnie Benshafrut and Michal Hackmey. Gal and Amit Ehrlich and Maier Fenster represented their practice, there were some representatives of the Ministry of Justice, Tal Sines from Haddassit, someone from the tech transfer company of one of the universities, and a transcriber who taped the entire meeting. Unfortunately, Ofir Alon of the Technion tech transfer company who has just been appointed the new Commissioner of Patents was absent.

The meeting was friendly and constructive. It highlighted the general perspective of the larger firms that comprised attorneys-at-law and patent attorneys but could not have both as partners and needed creative solutions to practice, versus the smaller firms that felt that some of the regulations under discussion would make it difficult or impossible for them to continue as sole-practitioners. 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.

 


Online Design Filing in Israel

December 22, 2016

ilpo

The Israel Patent Office held a seminar today to introduce their new online design submission interface. Over the past five years the Israel Patent Office has gradually introduced online trademark, PCT and patent filing and prosecution and has published guidelines for examiners, which help applicants and their representatives.

The Design Department is the last department to become fully computerized, and, if all goes well, the interface will become ‘live’ on 29 December 2016.

alferd_teeThere were some 50 participants at the seminar. These included veteran Patent Attorney and Rabbi, Alfred Thee, known generally as Mr T, who, though rather less muscular and black than the character from the A Team, is, nevertheless, a very sprightly and highly experienced 85 year-old practitioner that I had the benefit of training and qualifying under. Mr T told me that he was finally leaving his long-term employment at Seligsohn & Gabrieli at the end of the year, but would carry on working as a self-employed consultant. I anticipate retiring before he does!

In addition to various friends, colleagues and competitors, I noted the presence of Zvi Teff who qualified under my tutelage, and who has recently opened his own firm. We wish him luck with this endeavour.

aippiThe seminar ran from 11:00 AM to 1:00 PM. Those that could be bothered rushed over to Tel Aviv for a General Meeting of the AIPPI that started at 2:30 PM. Holding the two events on the same day seemed to be both rather silly and also discriminatory against those practitioners that file design applications.  Had the AIPPI held their event at the Israel Patent Office at 2:30, many more people would have attended both events. There are only a few hundred IP practitioners in Israel, including lawyers, examiners and patent attorneys, that could join the Israel Branch of the AIPPI. Doing a General Meeting on the same day as an IP seminar at the Patent Office is like holding a general meeting during INTA. It is plain stupid.

Commissioner Kling opened the event and spoke about the pending Israel Design Law which is due to replace the hopelessly outdated Design Ordinance from 1922 that is currently in force. Amongst other ramifications of the pending legislation, it will pave the way for Israel to join the Hague International trademark registration system.

After the Commissioner finished, the Head of the Design Department, Alice Mahlis-Abramovich took the podium. However, the actual instruction on the new interface was given by someone from a software instruction agency who bore a slight resemblance to Israeli singer Roni Dalumi. Having someone who was used to explaining how to use software explaining how to use the software was a strategy with mixed results. Since she didn’t practice design law, she could relate to what the software did, but not how to do various things that practitioners might want it to do. Also, she referred to something submitted as being a design, whereas practitioners would call these design applications, and only refer to the examined and registered product as a ‘design.’

Those now familiar with filing and prosecuting patent applications via the online interface will experience little difficulty using design interface. The seminar wasn’t very exciting, but some of the questions were rather interesting. Apparently one of my colleagues submits patent applications, listing a-company-in-the-process-of-being-set-up as the applicant to avoid a tax incident occurring. That as may be, a not yet formed company is not a real person or a legal person (entity). If the company is not formed or if the name changes, who can assign rights to the application? How can one obtain a date without an applicant that actually exists?