Patent Office Closures for Pesach

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

Requesting a patent allowance to be cancelled

January 8, 2017

reconsideration

Israel Patent Number 219586 to Fritz Collischan & Co. KG was allowed. The patent is titled “DEVICE FOR COUNTING OBJECTS FED AS BULK MATERIAL”and is the national phase entry into Israel of PCT/EP2010/067146 which published as WO2011/054974.

In a rather surprising move, Data Detection Technologies Inc, represented by Pearl Cohen Tzedek Latzer Brats requested that the allowance of the patent be cancelled. Actually this is not the first request of this type, for the present patent.  Back on 9 March 2015, following a request to have the allowance withdrawn on grounds that the applicant did not provide a list of prior art as required to under Section 18 of the Law, the same third party requested that the patent be disallowed, and on that occasion, the Applicant agreed for it to be returned to a state of pending allowance. Following that episode, the now pending patent application was returned to the Examiner and eventually was allowed on 29 September 2016 and published for Opposition purposes under Section 26 of the Law. Data Detection Technologies Inc have again requested that the case be returned to the Examiner as they have found additional citations and video clips that they claim reveal the invention and which were sent by themselves to the Applicant some month before allowance.

Despite bringing the additional material to the Applicant’s attention, the Applicants did not make this art of record and the patent was eventually allowed under Section 17c, on the basis of a corresponding issued patent (which presumably itself issued without the Examiner thereof considering the video clips and publications submitted by Data Detection Technologies Inc. Data Detection Technologies Inc argued that this failure is sufficient to prevent the patent issuing under Section 18c of the Law. Alternatively, since the citations are central to the patentability of the invention, Data Detection Technologies Inc considers that minimally the patent be returned to the Examiner for further Examination.

Data Detection Technologies Inc considers it inappropriate for them to have to fight an expensive opposition proceedings which was caused by the applicant failing in their duty of disclosure.

The Applicant claims that the appropriate way to raise issues relating to the duty of disclosure is via an opposition proceedings, and the arguments submitted by Data Detection Technologies relate to grounds for Opposition under Section 31 of the Law. The Applicant posits that withdrawal of allowance is an appropriate measure only in those rare cases where the decision to allow was flawed, or where a letter of allowance was issued by mistake. The Applicant does not consider this to be such a case.

The Applicant notes that the additional material was collected in an opposition proceeding that Fritz Collischan is fighting against an allowed patent of Data Detection Technologies. In that proceeding, Data Detection Technologies Inc requested an extension to respond to the Opposition and to amend the specification. The Applicant submits that the extension was applied for in bad faith and with factual inaccuracies in the justifications given. The Applicant further submits that the  Affidavit includes hearsay that is not acceptable as evidence.

Ruling

The parties concur that the Commissioner may cancel a notice of allowance and return an application to the Examiner if there is a major flaw in the decision to allow the patent. This authority is derived from Section 15 of the Law of Interpretation 1981 and was adopted by the patent office in the previous ruling concerning Data Detection vs. Collischan from 9 March 2015 and also in the Cellular Dynamics vs. Christopher Reed ruling from 29 April 2014.

The argument is whether the current situation is one where it is appropriate for the Commissioner to exercise their authority and to withdraw the notice of allowance, or whether the appropriate action is for Data Detection Technologies Inc to file an Opposition under Section 31 of the Patent Law 1967?

The Deputy Commissioner, Ms Jacqueline Bracha considers that the choice of appropriate course of action is to be found in the purposes of the two courses, which are also derived from their different ways of being initiated. The authority under Section 15 of the Law of Interpretation is something initiated by the administrative body to correct a mistake that they made in an earlier decision or t as a result of a change of circumstances, as an exceptional course of action where there is no other appropriate recourse authorized by the law (See Y. Zamir, Government Authority (1996) pages 1003-1006. In contradistinction, the purpose of the Opposition proceeding is to critique the Examination and to continue the Examination of a patent application in an inter-partes procedure initiated by the third party (see the Israel Patent Office Ruling re IL 136482 Bromium Compounds Ltd vs Albermarle Corporation of 7 November 2010.

 With all due respect, I consider that the courts approach has changed since then, and nowadays the Supreme Court considers the Opposition procedure as being complimentary to and a completion of the Examination since it is intended to serve the public interest and the accuracy of the register.

In the framework of cancellation of an allowance the amount that the public would have relied on the notice of allowance and the type of mistake that resulted in the allowance are to be considered. However, it should be appreciated that not ALL mistakes justify the cancellation of an administrative decision. A mistaken decision based on consideration of the facts and simply reaching the wrong conclusion, will not, in general, justify changing an administrative decision (see Zamir on page 1006). The Authority will generally reach this result in cases where there is a suspicion that someone has been awarded more than he deserves. Such a suspicion is not sufficient to justify cancelling the benefit by the  government body (see Zamir on Page 1007).

In contradistinction to the civil proceeding to cancel an administrative  decision, the Opposition is an adversarial judicial proceeding or sub-judicial proceeding that allows the parties to bring evidence in accordance with the law of evidence, allows opposing counsel to cross-examine witnesses and enables the patent office to come to a reasoned decision. In such a proceeding, the Patent Authority is not limited by the administrative decision and he can reexamine the patentability of the invention in light of the evidence and claims before it, even apart from the considerations that the Examiner used in reaching the decision of allowance.

From the above it is clear that where a mistake in a decision is not self-evident and requires substantive clarification, the administrative decision to cancel the allowance is inappropriate.

In this instance, to determine whether the applicant is required to alert the Examiner about the publications that Data Detection mention, one has to see whether the publications “relate directly to the invention” as required by Section 19(a)2 of the Patent Law. To do this, it is necessary to listen to the claims and evidence of the parties regarding the nature of the invention.

Even if a decision is reached that the Applicant should indeed have made these publications of record under the duty of disclosure, it is necessary to consider if a failure to have done so can be dealt with by the alternatives in Section 18 or if the decision to allow the patent [to proceed for opposition purposes] should be cancelled. In this regard, to the extent that a publication allegedly shows the patent being demonstrated or implemented, the Examiner is not duty bound to consider it.  Section 17b of the Law states that:

(a) an Examiner will consider if the Examination answers all the following:
(1) is for an invention considered patentable under Chapter 2;
….
(b) despite section (a)(1), there is no obligation to examine patentability in accordance with Section 4(2). 

In summary, the Deputy Commissioner Ms Bracha does not consider that the present case is a mistake that warrants cancellation of the Notice of Allowance and does not see how the legal and factual issues can be considered in a decision to cancel the allowance and how this advances the case to a final decision on patentability.

The final claim of Data Detection Technologies Inc, that Applicant’s failure to make art of record should not oblige them to enter a lengthy and costly opposition proceeding. It is true that oppositions are lengthy and the regulations provide at least 16 months from initiation of an opposition until a hearing is scheduled. The parties may request extensions and interim decisions, to correct the specification and more. Nevertheless, the Opposer can submit their evidence on filing their statement of case, thereby significantly shortening the procedure. Furthermore, on conclusion of the opposition, the prevailing party is awarded actual costs, if they are essential, reasonable and proportional See Bagatz 891/05 Tnuva Agricultural Cooperative vs. the Authority for Granting Import licenses, p/d/ 60(a) 600. From here it is clear that if Data Detection Technologies Inc are right, they can expense appropriate compensation.

Therefore it is not considered that the decision to allow the patent was clearly erroneous, justifying its cancellation without a factual inquiry, and it is precisely the anticipated costs that are incurred by an opposer for conducting an opposition that tilts the balance towards holding an opposition proceeding.

As an afterword, it is noted that this is not the place to consider the behavior of Data Detection Technologies in a separate opposition before the Patent Office.

Data Detection Technologies are ordered to pay 4000 Shekels + VAT in legal fees to Fritz Collischan.

Comment

This decision is a correct one. Since, nowadays pending applications publish 18 months from priority and the whole file wrapper is available for examination prior to allowance, maybe Israel should formally allow third party prior art submissions.

It seems that Data Detection Technologies Inc is trying to delay issuance without formally filing an opposition. I think that this decision, not allowing this is correct.

Previous opposition rulings that relate to failure to submit art generally did not invalidate the patent on this ground alone, but it is within the authority of the patent office to do so.


Israeli Designer Successfully Sues Fashion Chain for Copying Dress

December 26, 2016

necklines

Israel fashion designer Gadi Elemelech sued Renuar, a chain of selling women’s clothing for selling clothing that was confusingly similar to his haute couture dress. The dress in question appeared in Elemelech’s 2013 collection, and in Renuar’s 2014 range. The legal grounds for the action were the Israel Trade Related Torts Act 1999.

A unique design feature that was copied is in the neck shown above. The one on the right is Elimelech’s and that on the left is Renuar’s.

Elimelech sent a Cease and Desist but Renaur denied the allegations.

Section 1a of the Israel Trade Related Torts Act 1999 states:

No business should create the impression that a product they sell or a service they provide was provided by a third party of in connection with a third party.

Citing Judge David Cheshin in 8981/04 Avi Malka Avazi Restaurant vs. Avazi Hatikveh Neighbourhood (1997) from 2006 to the effect that the creation of a new tort simply reclassified the old one and was not substantially different. Professor Miguel Deutch concurred in his book Trade Related Torts and Trade Secrets 2002 came ot a similar conclusion, referring back to an academic paper by Judge Gidon Gilat to the effect that passing off does not only relate to fraudulent use of trademarks.

Renuar argued that there was no likelihood of confusion among Elimilelech’s clientele who know whether they are purchasing from designer or from the high street chain.

Elimelech argued that his dresses were ripped off  copied and sold in the chain and that this made them less desirable and limited his sales and profits.

Judge Gidon Gilat of the Tel Aviv District Court ruled that the sale was actionable under the Trade Related Torts act as ‘passing off’ since the designer dress was well known and associated with the designer, and the fashion chain’s dress was confusingly similar to the designer dress, which they were aware of.   The court awarded damages of 55,000 Shekels and a further 35,000 Shekels legal costs.

Civil Tort 5366-12-14 Elimelech vs. Renuar Ruling by Gidon Ginat, 22 December 2016

 


When Israel is inadvertently considered part of EPO

December 25, 2016

31-monthsIL 244062 is a national phase entry of PCT/AU2015/000701 which claims priority from an Australian patent that was filed on 10 July 2013. There was, therefore, until 1o January 2016 to file a national phase entry of the PCT application into Israel.

A request to extend this period was filed on 11 February 2016, and an Affidavit from the Vladimir Jakovina who owns the holding company Merline Investment Management Property Ltd was filed a few days later on 2 March 2015.

The head of the PCT Division refused the application as the 30 month deadline had passed. The Applicants appealed on the basis of the Affidavit which stated that the Jakovina’s daughter had been responsible for the national phase entries and had mistakenly believed that Israel was a member state of the EPO and that the deadline was, therefore, 31 months.

Ms Bracha rejected this, as although the PCT deadlines can be extended at the discretion of the Commissioner of Patents, the standard that the Israel Law requires is Due Care, and not the lower standard of intention. She did not consider that assuming that Israel was a member of the EPO and not checking this was compatible with the requirement of Due Care.

COMMENT

10 years ago, a Korean client of mine made the same mistake. We submitted an Affidavit that he mistakenly thought that Israel was a member of the EPO, and noted that Israel competed in the Eurovision Song Contest and played in the European football league. That request to extend the national phase entry was refused. Unfortunately for me, then Deputy Commissioner, Noa Shmulevezh, discussed the difference between patents and Eurovision song contests and ignored the other arguments I brought.

Back then, it was worth attempting to effect a late filing, but I am surprised that the agent of record (Colb) attempted this now. Over the past 10 years the Israel Patent Office has consistently refused to allow late national phase entries on the grounds that Applicant believed that Israel had a 31 month regime or was part of the EPO.

I did not appeal the previous patent office ruling to the courts as the client didn’t authorize me to do so. I wonder if the applicant this time will file an appeal. In the meantime, although the Israel Patent Office is addopting a high standard, it is at applying the same standard consistently.

 


Updated Blender Container May Be Registered as a Design

December 11, 2016

On 26 August 2014, HOMELAND HOUSEWARES, LLC submitted a design application to the Israel Patent Office for a blender container as shown below.

blender

Although the Design Ordinance 1924 only requires local novelty, previous Commissioner Dr Meir Noam interpreted this to include prior art on the internet that is accessible in Israel. In an Office Action of 1 July 2015, the Examiner found a picture of a blender on the Applicant’s website that appeared to preempt the registration and therefore refused the design. The Applicant responded on 23 August 2015 to the effect that the blender on the website was an earlier model. Although both had four vertical ribs, in the earlier model blender as shown on the website, these ribs were protrusions on the inside of the container, that served as baffles, preventing the contents from swirling around and aiding blending, whereas in the applied for design the vertical ribs were on the inside and outside. Noting that to remove the container required inverting it and therefore arguing that uses would grip the top (the base when inverted) and not the protruding ribs, these ribs were aesthetic, non-functional elements, and by virtue thereof, the design was registerable.

The Applicant submitted an affidavit that stated:

7. The presence of external ribs changes the overall appearance and impression of the vessel significantly. The cross-section of the ribs is triangular in shape and the vertex of the external ribs is pointing outside. As such, users can see four external ribs that are very sharp. In contrast, users can only see the base of the triangular ribs in the prior art because the internal ribs are pointing inward. …

8. The presence of the external ribs also creates lighting effects that improve the appearance of the vessel. The vessel is made of plastic so that it is partially reflective and partially translucent. …”

“9. The presence of external ribs is mainly for aesthetic reasons. While internal ribs promote communication and disintegration of food contents, the external ribs do not interact with the food content and do not have any effect on the blending and mixing quality of the blender. The external ribs do not significantly help users to open or close the vessel with the blade base. … when users want to open the vessel and remove the blade base, they have to invert the vessel otherwise the food contents will spill. Hence, users will apply force to the blade base to rotate the blade base off of the vessel.”

“10. … The field of mixing vessels is regarded as very crowded. Vessels that have internal ribs are very common. …
11. However, I am not aware of any prior art blender vessel that has ribs on the external surface. Since the field of mixing vessels is crowded, it is my opinion that having external ribs on the surface is a very significant alternation of the appearance of mixing vessels. …”

The Commissioner Asa Kling, reiterated that any original or new design could be registered in Israel, and the term design is includes outlines, shapes or decorations of industrial objects of manufacture that are readily visible to consumers who need not be experts but are not simply passers-by (sections 1 and 2 of the ordinance, and 1187/94 Sela vs Ackerstein LTD [8] 291. 

With reference to the 22424, 22433, 22783 and 23767 Klil ruling from 1997, in crowded fields, one does not analyze an object into its elements, but considers it as a whole, see also 31007 Thermo-gumi vs Agmon Plastics and Rubber Industry, 4 April 2011.

With regards to designs on the Internet accessible from Israel, these are prior art under the ordinance as interpreted, see Design 51593 and 51594 Tequila Cuervo S.A. DE. and the Teva Naot case, and further ruled that previous decisions that required care when considering Internet publications not in patent office databases, required care regarding the date of posting, but were prior art in all regards. He accepted the Applicant’s contention that the external ribs were an aesthetic and non-functional modification, and allowed the application, returning it to the design department for registration.

 


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.