Amending Consisting to Comprising in Claims of An Issued Patent

November 1, 2016

spelling-is-hardTypographical and scribal errors may be corrected in already issued Israeli patents provided that the commissioner is convinced that the error is a genuine one and that the patentee is not using an alleged error to widen the coverage of the claims.

In the case of Israel Patent No. 194774 to Lantmann As-Faktor AB [no relation- MF], titled “ANTISECRETORY PROTEIN FOR USE IN THE TREATMENT OF COMPARTMENT SYNDROME”, after the patent issued, an Examiner refused to allow an error to be corrected. The patentee appealed this decision to the Commissioner, under Section 161 of the Israel Patent Law 1967.

wish you were her.jpgThe patentee claimed that a mistake had occurred in claims 1 and 21 as granted. The Examiner agreed that a mistake had indeed occurred but wasn’t prepared to consider the mistake as being a typographical / scribal error that could be corrected.

In general, Section 65 allows scribal errors to be corrected and Section 66 provides various conditions. Section 69 states that:

(a) the patentee is able to request a correction to a scribal error that occurred in the specification, and the Commissioner will allow this provided he is convinced that this is ONLY a correction of a scribal error

(b) the Commissioner is also allowed to initiate the correction of a scribal error found in the specification provided that the patentee agrees.  

erroristsThe allowance of the patent changes the rules regarding amending the specification. Once the patent is allowed there is less flexibility. Whereas section 22 allows applicants to amend anything and everything prior to  allowance under Section 26, The part three amendments of sections 65-69 that are allowable after allowance or grant are far more restrictive. See regulations 101 and 102.

Regulations 95-102 of the Patent Regulations 1968 regulate the post allowance amendments in accordance with Sections 65 and 66, and allow the patentee a hearing in this regard. These regulations do NOT apply to Section 69 and nor do their procedural aspects.

Correcting typographical errors is also related to in section 171 which states:

The Commissioner is allowed, if requested to do so, to correct any typographical errors in the patent register or in any document from the Patent Office.

It is noted that Section 170a grants the Commissioner wide discretion to amend documents if they do not correctly reflect the state of affairs.

(a) Following a request from an interested party, appropriately submitted in accordance with the guidelines, the Commissioner can amend the register or any document filed with or issued by the Patent Office, if he considers that the register or the document does not correctly reflect the facts and where this Law does not provide an alternative method for effecting the correction.

In contradistinction to amendments to register entries and documents that require publishing for public opposition, amending a scribal error does not necessary require its publication. However, with regard to amendments requested by the Commissioner, Section 172 requires the Commissioner to allow any parties that may be adversely affected to state their case.

In addition, Regulation 149 allows requesting the correction of any register entry or document that does not have specific regulations or laws elsewhere. In such cases, the Commissioner has the discretion whether or not to publish the amendment based on the rights of third-parties that may be adversely affected.

Prior to IL 194774 issuing, there were several rounds of interaction between the examiner and the applicant. with respect to the Office Action of 6 October 2014 the Examiner stated that the claims should be amended as follows:

2(a) As per Regulation 20(a)(3) with respect to claims 1 and 20, the phrase ‘which corresponds to’ should be amended to ‘consisting’ which is a well-known and clearly defined term.

2(b) Combining claim 7 with claim 2 does not overcome the problem referred to in section 3(a) of the Office Action from 4 December 2014 and it is therefore repeated: Claim 2 contravenes Regulation 20(a)(3) since it defines two separate dosage regimes rendering the scope of the claim unclear. The two regimes should be divided by the word ‘preferably’ as per Page 19 line 14, or alternatively, you could claim the narrower, preferred regime in a separate dependent claim.

2(c) At this stage I only have a marked-up claim-set (version 4). After correcting these issues, please submit full marked up and clean claim-sets.

3. If all the issues raised are addressed, I can accept the application (PK 27).

In the  response of 4 February 2015 a fifth amended claim-set was submitted showing the amendments. In an accompanying letter the Applicant noted that following the amendments he anticipated allowance, but noted that “in the appended pages claims 1 and 20 were amended such that the word comprising was replaced with consisting and claim 2 was divided into two claims.”

In practice, the Examiner’s requirements in 2(b) were fully met. the 2(a) requirements are the subject of the present decision.

In his letter of 17 May 2015, the Examiner noted that the examination was concluded and the application with claim version 5 was allowed. The Applicant was invited to check the allowed patent to ensure that there were no errors. On 12 July 2015 the Applicant paid the issue fees and requested publication of the allowed patent application without referring to any typographical errors.

The allowance published in the 30 July 2015 journal and in absence of any oppositions, a patent certificate issued.

Subsequently, on 2 December 2015, the patentee claimed that due to an error, claims 1 and 22 were not fully amended and requested that the claim 1 version 5 as follows 1. An antisecretory protein, which corresponds to an amino acid sequence as shown in SEQ ID NO:6, or a homologue, and/or fragment thereof comprisingconsisting of an amino acid sequence as shown in SEQ ID NO:4 and having antisecretory activity, and/or pharmaceutically acceptable salt thereof, for use in the treatment and/or prevention of compartment syndrome.” be amended to “1. An antisecretory protein, which corresponds consisting ofto an amino acid sequence as shown in SEQ ID NO:6, or a homologue, and/or fragment thereof consisting comprising of an amino acid sequence as shown in SEQ ID NO:4 and having antisecretory activity, and/or pharmaceutically acceptable salt thereof, for use in the treatment and/or prevention of compartment syndrome.” A similar amendment to claim 22 was requested. Both versions are supported by the specification and there is no problem of unity of invention.

The patentee submitted a statement by Ms Sigal Dahan a patent attorney of the agent of record (Reinhold Cohn). Ms Dahan affirmed that she was requested to amend the claims in accordance with the Examiner’s request. she claimed that failure to do so was the result of a genuine scribal error and that there was no bad faith.

The Commissioner Asa Kling is prepared to accept Ms Dahan’s statement and that of the Applicant and to accept that there was a genuine mistake made without evidence of bad faith.

However, at this stage, following the issuance of the patent,  the examiner wants to amend the phrase ‘which corresponds to’ to ‘consisting of’ and ‘consisting of’ to ‘comprising’.  This is problematic since the term comprising is understood to be wider that the term consisting.

A requirement that a claim “comprises” certain elements does not mean that other elements may not be present: “comprising” does not mean “only consisting of”.(Terrel on the Law of Patents, 17th ed., pp. 288).

The amendment from ‘which corresponds to’ to consisting of is narrowing and is allowable. However, amending consisting of to comprising is a widening.

On 28 January 2016 the Examiner acknowledged that a mistake had occurred, but did not consider this to be a scribal error:

Although I was convinced from the statement filed that a mistake occurred in version 5 that was allowed, I have to examine this mistake as a ‘scribal error’ and cannot accept the amendment as it is not a ‘mere scribal error’ as required by Section 69 of the Law.

The Examiner did not find that version 5 included a clear and obvious typographical error that could be corrected.

Following the Examiner rejecting the amendment, the patentee appealed to the commissioner against the Examiner’s interpretation of Section 69 and alternatively requested that the Commissioner allow the amendment under Section 170 of the Law.

The Patentee argued that in the circumstances it was appropriate to allow the amendment in these circumstances.

The problem is that in the letter of 28 January 2016 the Examiner told the Applicant that subject to correcting the detailed problems with claims as filed, the application would be allowed, thereby saving an examination round. Both versions 5 and 6 overcome the Examiner’s issues and are allowable.

Creatively, the Patentee noted that the Examination guidelines were applicable to pending applications and not to issued patents. This is clear from the fact that the guidelines don’t relate to Section 69 that regulates amending allowed and issued patents.

In his ruling, the Commissioner noted that there is a difference between amending pending applications under Section 22 and amending issued patents under Part 3 of Chapter 4 of the Law that relates to issued patents. The types of amendments allowable are discussed in the Opposition to amend IL 121004 in Mutli-vision technologies vs. Avner Medar 4 May 2003 which defines scribal errors both objectively and subjectively.

comedy-of-errorsThe fact that an error occurred is not sufficient to classify it as a scribal error that may be amended. To classify the error as a scribal error it should be an error of the type that is self-evident on reading the specification and must be the result of a technicality. As defined in Medar, so long as the error is not self-evident, the evidentiary support that it was an error is required to be stronger. From this it is possible that the Examiner was overly formalistic. Nevertheless, following Medar the test is whether a person of the art reading the specification would note immediately that an error had occurred.

From the Office Action, the correspondence and the affidavit of the patentee it is not clear that the Applicant intended to narrow the scope of the patent and this occurred in error. When the Applicant pointed out the error, the Examiner accepted that it was indeed an error and the patent therefore issued in error. One the patent issued, for a scribal error to be corrected, it is necessary for it to be clearly a scribal error. That means to say that were the patentee not to have pointed out the error and requested rectification, the claims of version 5 could have remained the claims on record. Consequently this is not a ‘mere scribal error’.

However, one cannot ignore the fact that the patent issued by mistake. In the circumstances and with regards to the mistake one cannot conclude that section 3 of Chapter 4 applies. It does not appear appropriate to cancel the allowance since both versions 5 and 6 are acceptable claims. The appropriate legal basis for the amendment is section 170 since the document does not reflect the facts and there is no other way to allow the amendment.

The commissioner therefore allows the amendment of IL 194774 claim version 6 under section 170 subject to publication of the amendment in the forthcoming journal, thereby allowing third-party oppositions.

COMMENT

I agree that the commissioner has the authority to allow this amendment but think that allowing this error is wrong. It is a clear widening of the claimed invention and the agent of record is supposed to be well aware of the significance of the terms corresponding and comprising.

I do not agree with the Commissioner’s interpretation of section 170a, that relates to amendments ‘if he considers that the register or the document does not correctly reflect the facts‘. This should be limited to a case, for example, where despite a later amendment having been filed prior to allowance, the claim-set of the issued patent does not reflect this amendment. It should not be used where the fact is what the Agent of the Applicant meant to do, which is a matter of conjecture, but of what the Agent of the Applicant actually did. Here the Agent may have made a genuine mistake but who says that all mistakes may be fixed? The amended claims are wider than those that issued and the Agent had an opportunity to amend prior to paying the publication fee.

This scribal error is somewhat reminiscent of the alleged office error committed by the same firm in the wet-wipes case. I do not have an invested interest to oppose the amendment. If somebody does, I hope that they do and would like to see this amendment canceled.


Israel Patent Office Closures – October 2016

September 28, 2016

The Israel Patent Office is closed on Fridays and Saturdays. It is also closed on Jewish Holidays, including Rosh Hashana, Yom Kippur and Suckot, and the day before.

The following list sums up when the Israel Patent Office is closed:

DATE Israel Patent Office
Fri. Sept. 30, 2016 Closed
Sun.   Oct. 2, 2016 Closed
Mon. Oct 3,   2016 Closed
 Tues. Oct. 4, 2016 Closed
Tues. Oct.11, 2016 Closed
Wed. Oct.12, 2016 Closed
Fri. Oct. 14, 2016 Closed
Sun.  Oct. 16, 2016 Closed
Mon.    Oct. 17, 2016 Closed
Tues. Oct. 18, 2016 Closed
Wed. Oct .19, 2016 Closed
Thurs. Oct 20, 2016 Closed
Fri.  Oct.21 2016 Closed
Sun. Oct.23, 2016 Closed
Mon. Oct.24, 2016 Closed

 

The Chinese Patent Office is closed in the first week of October – from 1 October to 7 October.

On Monday October 3, is the Islamic New Year as well as Rosh Hashana and a number of Patent Offices are closed. The EPO in Munich and the German Patent Office are closed for German Unity Day.

On Oct 8-10, the Japanese Patent Office is closed for Sports Day.

A number of Arab Country Patent Offices and also the Indian Patent Offices are closed on October 11-12, presumably in celebration of Yom Kippur.

October 30 is Diwali and possibly patent offices in Hindu countries are closed. It is also a Sunday, so although the Israel Patent Office is open, many others are not.

October 31 is Halloween (Night of All Saints). I am unaware of official closures, but druid associates may be unavailable.

A marked up calendar showing the various office closures may be found october-calendar-2016.

When a deadline falls on a day that a patent office is closed, typically the deadline is extended to the next working day. This is the case in Israel, US, EPO, etc. I can’t be certain regarding all jurisdictions. It is true for design and trademark prosecution and renewals, not just for patents.

This could be useful if a PCT application is not ready for filing on time. For instance, a PCT application claiming priority from an application filed on 14th October 2015 could be filed with the Israel Patent Office as the receiving office on 25 October 2016. It doesn’t matter that on 14, 16, 18-21 or 23, or even after nightfall on 15, 17, 22, or 24 an Observant Jewish Israeli Patent Attorney could file online. Associates around the world wishing to capitalize on this could make an Israel associate (like me) a co-owner in a jurisdiction of little commercial interest, such as Trinidad and Tobago (no offense intended) and then the PCT application could be filed in Israel and would be considered timely filed and the priority date would be recognized. Worth bearing in mind.

We take this opportunity to wish all clients, colleagues and readers, a Happy New Year and to humbly ask forgiveness for any innacuracies in or offence caused by any IP Factor blog post.


Wet-wipes, The Issue of Inventorship and the Responsibilities of the Patent Attorney

September 22, 2016

wetnap-were-ready-for-any-messThis ruling concerns a product that resulting from the contributions of two people who were formerly friends. A patent application was filed that named both people as both inventors and applicants. Later, after powers-of-attorney signed by each of the named inventor – applicants had been filed, there was an attempt to ‘correct an office error’, to list one of them as an inventor only. The corresponding PCT application and the national phase entry applications, including two issued patents in the United States only bore the name of one inventor and applicant. In an Opposition ruling the Israel Patent Office has now accepted that the second named inventor is indeed an inventor and also an owner.

Apart from emphasizing the need to determine who is the inventor and who is the owner of an invention when the patent is filed, the need to put everything into writing, and the dangers of working with friends, the case raises interesting questions regarding what contribution to reducing a patent to practice entitles someone to recognition as an inventor and whether this standard is the same in all jurisdictions. It also raises interesting questions regarding the duties and responsibilities of the patent attorney to ascertain the facts, or at least to avoid signing on contradictory statements regarding ownership and invention in different jurisdictions.

BACKGROUND

IL 152867 titled “Tissue Container With Auxiliary Compartment”is a patent application for a package of wet-wipes
rc-chairswith an adjacent container for nappy cream. The Application was filed back in November 2002 and listed Boaz Krystal and Liat De-Vries as inventors and owners. The patent application was allowed at the end of June 2010.

Subsequently, an Opposition was filed by WET-NAPS LTD and Liat De-Vries on 4 October 2010 under Section 31(3) of the Israel Patent Law 1967 on the grounds that Boaz Krystal was not in fact an owner, and that the patent was exclusively owned by Ms Liat De-Vries.
affidavitsMr Boaz Krystal and his wife Mrs Dorit Krystal each submitted affidavits. Mrs Liat De-Vries submitted a primary affidavit and a supplementary one in response to Mr Boaz Krystal’s affidavit. Wet-Naps Ltd. is owned by Mr Ilan De-Vries, who is Mrs Liat De-Vries’ husband. He also submitted an affidavit on behalf of the company.  Mr David De-Vries, a patent attorney at Reinhold Cohn & Partners who drafted and filed the application and is a cousin of Mr Ilan De-Vries, Ms Ronit Tal who is an acquaintance of Liat De-Vries and Mr Yoram Hadar who is an industrial designer, also submitted affidavits. A hearing was held and the parties submitted their summaries.

wetnapWet-Nap Ltd manufactures, exports and markets wet-wipes. The company had a business relationship with Packtop Ltd., a company directed by Mr Boaz Krystal that distributes wet-wipes amongst other things.   At the time of filing, both the Krystals and the De-Vries couple were good friends.

roobarbs-shedThere is no argument that Mr Boaz Krystal and Mrs Liat De-Vries met at the Wet-Nap Ltd factory, where Mr Boaz Krystal heard the idea of including baby ointment together with a package of wet-wipes from Mrs Liat De-Vries. There is also no argument that Mr Boaz Krystal and Mrs Liat De-Vries had some kind of collaboration, to develop and improve this invention and to file a patent application for it. Eventually a joint application was filed in both Mr Boaz Krystal and Mrs Liat De-Vries names. However, the parties disagree regarding Mr Krystal’s contribution to the development of the invention and consequently disagree regarding whether he is to be considered an inventor and owner of the patent.

The Main Documents in the Prosecution File Wrapper

roobard-and-custard-friendsThe Application was filed in November 2002 by Reinhold Cohn Patent Attorneys. The Application form lists both Mr Boaz Krystal and Mrs Liat De-Vries as joint owners due to them being inventions. Both parties filed Powers of Attorney, and the Filing Certificate gives both names.

On 10 December 2002, Adv. David De-Vries of Reinhold Cohn Patent Attorneys submitted a notice stating:

office-error“Due to an office error, the name of the inventor, Mr Boaz Krystal was inserted as an Applicant. With our apologies for this, we are submitting a new cover sheet and application form in duplicate, listing Mr Boaz Krystal and Mrs Liat De-Vries as joint inventors, but Mrs Liat De-Vries as the sole owner.”

On 10 December 2002, Adv. Edna Haruti, now Mr Krystal’s representative, submitted a letter in which it was stated that Mr Krystal was a joint owner together with Mrs Liat De-Vries as he had invented the tissue container with auxiliary compartment together with her.  Adv. Edna Haruti also noted that registration of the patent in the name of Mrs Liat De-Vries only was contrary to the agreement between the parties.

shimon-shalitOn 2 February 2003 Patent Attorney Shimon Shalit, then Senior Examiner in charge of formalities at the Israel Patent Office, responded to both Reinhold Cohn and to Mr Krystal that Mr Krystal could not be removed as an owner in the application as filed, since there was no indication that he had assigned his invention to Mrs Liat De-Vries prior to the application being filed. In absence of such proof, since Mr Krystal was not an employee of Mrs De-Vries, by virtue of being a co-inventor, he was also a co-owner.

(As an aside – On 12 March 2006 Mrs De-Vries submitted a divisional application of IL 152867 for certain applications of the invention. This divisional application (IL 174309) was examined, allowed and issued as a patent. On 1 December 2010 IL 174309 lapsed due to failure to pay the renewal fees. That patent is not directly relevant to this Opposition, but Wet-Naps Ltd and Liat De-Vries related to it in their claims).

procrastinateIn the protocol of a hearing held on 5 February 2007 before then Deputy Commissioner Noah Smulevezh it was decided to defer the issue of ownership until the examination of the application was completed. It was further ruled that Reinhold Cohn would be address of record, but would update Mr Krystal or his representative regarding actions taken to get his input before responding to office actions. The patent application was eventually allowed and published for opposition purposes, resulting in this opposition proceeding.

The Opposers’ (Wet-Naps Ltd and Mrs Liat De-Vries) Main Claims
wetnap

Mrs De-Vries and Wet-Naps Ltd claimed to have thought of the idea and developed the invention whereas Mr Krystal had merely provided technical drawings and a business plan for commercializing the product. They alleged that during the period in question, Mr Krystal provided technical and consultancy services to the company as almost an in-house service provider and as such, was exposed to the invention. They further claimed that Mr Yoram Hadar (industrial designer) and Patent Attorney David De-Vries provided sketches for the product that eventually evolved into the patent application. They further alleged that Mr Krystal had suggested a specific implementation (embodiment?) – storing the cream in a blister pack or sachets, which developed into  Read the rest of this entry »


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.


Reconsideration of a Patent Extension Term

August 10, 2016

last minute shopping

In an odd development, but not one that without precedent – see here and here – Dr Shlomo Cohen Law Offices has asked the Israel Patent Office to reconsider a judicial ruling.

In this instance, the original ruling relates to the Patent Term Extension (PTE) of IL 169693 to “Bristol Myers Squibb” and Pfizer that issued under section 64(v)5 of the Israel Patent Law. The original ruling issued in September 2015, and granted a patent term extension of 974 days until 18 May 2025. That ruling followed a challenge by the patentees to Examiner’s decision of 5 March 2015.

The way that Patent Term Extensions (PTEs) are calculated in Israel is detailed in Read the rest of this entry »


Ful – the Broad-bean Ruling

July 15, 2016

It is generally known that the Lilliput wars were fought over which side one should crack to access the contents of soft-boiled eggs.

Zeno Eitam owns registered Israel trademarks 262406 and 258737 reproduced above.  The words mean “House of Ful (broad-beans), Tasty and Healthful Since 1952.

Apart from Iraqi Jews who have G6PD, i.e. a recessive hereditary disease, causing a lack of the glucose-6-phosphate dehydrogenase enzyme, Ful is a common food amongst oriental Jews. Ful has been tasty and healthful (at least for those not allergic) far longer than since 1952, but the legendary Ful outlet in Beer Sheva was apparently established back then.

The Ashkenazi clan (that’s their surname, not origin, and one assumes they are actually Mizrachi, probably Moroccan or Tunisian) filed to have the marks cancelled due to lack of use.

Yitzhak, Shalom, Yaakov, Moshe and Yoseph Ashkenazi were represented by Adv. Einat Noy Peri. On 10 May 2016 she submitted a hand-written note to the Trademark Office withdrawing her representation, however no explanation or justification was given. On 15 May 2016, the Trademark Office ruled that she could not simply withdraw, and remained the attorney-of-record until someone else is appointed, and gave her until the following day, 16 May 2016, to state whether her evidence was provided to the other side or not, but, to date, she has not complied.

On 22 May 2015, Yitzhak Ashkenazi filed to have the cancellation proceedings abandoned. As of 24 May 2016, Yitzhak Ashkenazi has been represented by Adv. Yoram Dadia.

On behalf of Mr Eitam, Adv. David Walberg (pronounced Deivid and not Dah-vid, so presumably both Ashkenazi by extraction if not in name, and probably an import from an English-speaking country) accepted the abandonment of the cancellation proceedings. He considers that Adv. Yoram Dadia should be considered as acting on behalf of all plaintiffs, and anyway, the cancellation proceedings should be thrown out since the plaintiffs requesting cancellation did not submit any evidence supporting their claims.

The Adjudicator of IP, Ms Yaara Shoshani Caspi ruled that she could not ignore the protocol of a discussion between Yitchak Ashkenazi and Ms Osnot Askenazi and Ms Bar Ashkenazi that took place on 17 April 2016 before the Been Sheva District Court Judge Ms Rachel Barkai (12737-10-15) that endorsed a compromise agreement between the parties under which the Ahkenazis would withdraw the cancellation requests in the current case.

The problem is that there is that the parties in the present case are not identical to those that were party to the case before  the District Court, and, apart from YItzhak Ashkenazi, the other parties to the trademark cancellation proceedings remains Adv. Einat Noy Peri until she manages to extricate herself from her obligations. The other plaintiffs have not agreed to have the cancellation proceedings closed, nor have they accepted Adv. Dadia as their representative. Therefore, the Court Protocol cannot be relied upon in this instance.

The question remains whether there are additional grounds for cancelling the proceedings? From reviewing the cancellation application it appears that the evidence for cancellation was submitted on a portable disk that cannot be reviewed. It is also not clear that these were provided to the mark holder. The Applicants for cancellation should be given an opportunity to provide the evidence to the court and to the mark owner in readable form.  That said, it seems pointless to order the submission of evidence in an acceptable form from plaintiffs that want to withdraw their case.

Ms Shoshani Caspi separately ordered all three lawyers, Ms Noy-Peri, Mr Dadia and Mr Walberg to inform all plaintiffs within seven days that they have 45 days to submit their evidence for cancellation in an acceptable, accessible form to the Trademark Office and to Mr Zeno Eitam or the case will be closed.

Interim ruling by Ms Yaara Shoshani-Caspi concerning cancellation proceedings against Israel trademarks 262406 and 25873 to Eitham, 6 June 2016.

 

 


IPR’s Best Practices in Intellectual Property Conference 2016

June 5, 2016

ipr 2016.jpg

Despite having piles of work accumulating after INTA last week, I was privileged to attend the IPR conference in Tel Aviv on Monday and Tuesday. This was the fourth annual conference on Best Practices in Intellectual Property, and organizer Kim Lindy had lined up a well thought out program with some impressive speakers such as David Kappos, the former director of the USPTO and Dr Joo Sup Kim, the Vice President of IP at LG Electronics.

Most of the presenters and moderators were practitioners from abroad whose firms were subsidising the event. Nevertheless, the sessions were practical and meaningful, and the training sessions the following day were well constructed and well presented. The speakers took care not to cover the same material. The cost required from participants was low and the conference was very good value for money.

This was less academic and more practical than the AIPPI conference held a couple of months ago, . From a head-count, attendance hovered at the 100 mark including the numerous speakers. the audience consisted mostly of in-house counsel in industry but also some of the junior attorneys at a couple of the larger firms. As usual, most practitioners in private practice, particularly the senior partners, boycotted the event. However, to be fair, following closely both INTA and Biomed may have made it difficult for some to find the time. Clearly, from the non-attendance of the IPAA general meeting, that wasn’t a reason for service providers not attending as they ignored that as well, but the AIPPI conference being held in March instead of in the autumn can’t have helped.

As the topics covered included the new unitary patent in Europe, 101 rejections in the post Alice wonderland, EPO opposition procedures and other up-to-date topics, I think that those private practitioners who did not attend but continue to give expensive advice to clients are doing those clients a disservice.  I found the sessions sufficiently interesting that I chose from the three tracks on offer and did not flit from one session to another to be able to fairly review the event as a whole.

sheraton.jpg

The Sheraton is a quality hotel and the refreshments, from breakfast, through coffee breaks, three course lunch and Finnegan sponsored cocktail reception, reflected this.

kappos.JPG

With typical American jingoism, former USPTO director (and Howard Poliner lookalike) David Kappos spoke about the importance of continued US preeminence in patenting after the forthcoming presidential elections, regardless of the outcome. Despite his convictions, and although finding Milton Freedman both more convincing than Marx and far more readable, I don’t see how a free market economy can compete with a directed, centralized economy having a much larger population and pursuing IP with vigour. I expect that over the next presidential term of office, the US will fall behind China in all meaningful measurements of IP. Personally, I found the presentation of the other keynote speaker, Dr Joo Sup Kim of LG, disappointing and lacking in deep insights.

fireside chat

Daniella Azmony and Michael Fink of Greenblum and Bernstein co-chaired a session on using IP to advance business objectives. On the panel, Gerson Panitch of Finnegan, Henderson, Farabow, Garrett and Dunner pushed the importance of patent mining. He noted that he was able to find inventions to be patented for his clients that the engineers considered obvious. This strategy may explain how Finnegan got to be the largest IP firm and why the firm was celebrating its 100th Israeli client (a number I surpassed years ago). The problem is that Finnegan’s Juristat_Top_100 (1) filing ranking of 22nd is far above their allowance ranking of 115, their number of office actions to allowance ranking of 115 and their time to allowance ranking of 126. In other words, it is not just the engineer inventors that are not convinced that their inventions are patentable, but Finnegan seems to have a problem convincing the Examiners as well! Where they do succeed, it is a long, hard slog. Thus their service is not merely expensive and overly US focused, but they don’t deliver the goods either. In a further session, Finnegan partner Jeffrey Berkowitz referred to the firm calling the director of the USPTO to complain about specific Examiners. This arrogant and aggressive tactic doesn’t seem to help them  get cases allowed either. Nevertheless, the canapes at their celebratory cocktail party after the conference were delicious, with seared tuna, smoked salmon, chopped liver pate, and other nibbles. The cocktails themselves were Bucks Fizz, and tasted like orange juice that has began to ferment. Finnegan also provided a live band (not Bucks Fizz, but a three-piece suite brass band). They certainly know how to throw a good party.

Dr Kim and  Barry Schindler (Greenberg and Traurig) held what was romantically called a fireside chat, but no fire was in evidence. There were parallel sessions for beginners and more advanced. There was little in the way of swag. Kim Lindy gave everyone a mobile phone charging lead on a reel that was apparently sponsored by Finnegan but for some reason did not have their logo on, IP Factor gave out boxes of their PC Teabags, a type of patent medicine and cure-all for treating IP related stresses, and Mintz Levin gave out a useful book reading lamp consisting of white LEDs on a flexible stem.

The following day had several parallel master classes. In the ones I attended, Jakob Pade Frederiksen of Inspicos P/S, a Danish firm gave a very good presentation about EPO Oppositions which are quite different from Israeli and US opposition procedures. This was followed by Barry Schindler (Greenberg and Traurig) who gave an excellent though quirky presentation, arguing that when responding to office actions in the US, accusing the Examiner of using inadmissible hindsight was a waste of time, as was citing case-law since very few examiners had a legal background.  Respectfully noting various arguments was unnecessary. He explained how examiners are taught to examine and the limited time available to them. He advocated citing from the M.P.E.P., amending claims to make the examiner feel good, incorporating explanatory wherein clauses from the specification and limiting substantive arguments to two pages. Much of what he said made sense, albeit some comments were somewhat exaggerated.

If I have a criticism of the event, it is that I think that a session on prosecuting patent applications in Israel would have been a valuable addition. Some of the in-house counsel were involved directly or indirectly in expensive and time-consuming oppositions before the Israel Commissioner. Personally, I think that in the post IAI era, first filing in Israel makes sense, and filing in Israel offers a good tool against ex-employees competing with Israel companies. However, from issues discussed over coffee, it seems that one in-house counsel files provisionals and Israel applications simultaneously but can’t explain why, calling it inertia. One lawyer felt that standard assignment contract clauses were adequate, but admitted to having no idea of the case-law. When discussing a presentation made on behalf of the IPAA to entrepeneurs (where I was on the panel reviewing slides), it was clear that some eminent members of the profession were unaware of renewal schedules for Israel patents.  It seems that apart from occasionally reading this blog, many Israel Patent Attorneys do little to keep up with local developments once they are licensed. I think this is a shame.