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.


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

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.


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.


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


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.

Refael Opposes Israel Aircraft Adding Evidence in Patent Opposition

May 14, 2016


Israel Patent Application Number 190197 to Israel Aircraft Industries titled “A Method for Performing Exo-Atmospheric Missile’s Interception Trial” was allowed and published for Opposition purposes. Refael Advanced Weapons Systems LTD opposed the patent issuing.

After a hearing of the evidence on 20 January 2016 and before the parties submitted their summation statements, Israel Aircraft Industries requested submitting a copy of PCT/IL2009/000303, the international application claiming priority from IL190197.


Section 67 of the Patent Regulations 1968 states that the end of the evidence stage is the hearing, and further evidence may only be submitted at the discretion of the Commissioner of Patents:

Neither Applicant or Opposer may file further evidence unless with the permission of the Commissioner.

The consideration for allowing such late submissions are the relevance of the evidence. See IL 179840 Aminach Furniture Industries vs. Moshe Gabai et al. (20/11/2014) Section 12. The question of relevance means the likelihood of the relevance swaying the decision if allowed.

The courts have detailed additional considerations for allowing late evidence in Civil Appeal 579/90 Mordechai and Gila Rizin vs. Rsipporah bin Nun (5/7/1992) and includes the type of evidence, where a simple technical fact is more easily submitted than a complex and tenuous scientific or legal argument, the stage of the proceedings, and whether or not the side bringing the evidence could and should have known about it earlier. However, as the Supreme Court ruled in the Aminach Appeal, the Patent Office has a slightly different duty to that of the courts in that it does not merely arbitrate inter-partes proceedings, but is responsible for the integrity of the patent register, meaning that it has a public responsibility to prevent patents from issuing where they lack novelty or inventive step.

The issue here is that the original application used the term ‘decoy’, but in the international stage, the term ‘dummy target’ was substituted.  The additional evidence was submitted after the opposer related to the change in terminology during the hearing, during cross-examination of the Applicant’s witness Dr Robinski. Following the witness’ response during the hearing, the Opposer alleged that the Examiner had been misled by the Applicant switching the figures and terminology from ‘decoy’ to ‘dummy target’, followed by claiming that the prior art related to decoys whereas the present invention related to dummy targets.

The Applicant responded that the International Application which he wished to submit as evidence, showed that there was no attempt at deceit. Furthermore, the International Application was before the Examiner when this application was examined. The Opposer does not deny this, and the whole International file-wrapper including the International Search Report were before the Examiner.In such circumstances, it is highly doubtful that if the International Publication had been cited during the hearing by either party, that the opposing party would have opposed this as submission of new evidence.

The parties disagree as to the relevance of the international application and to whether it sheds light on the patentability of the Israel Application and whether the Examiner was misled.

Without relating to the main issue of patentability and misleading the Examiner which belongs in the ruling and not in an interim-judgement, the Commissioner, Asa Kling, is willing to allow the International Application to be submitted as additional evidence at this late stage of the proceedings.

This is justified, since it is clear that the Applicant would not have needed to file this additional submission if it were not for the line of attack taken by the Opposer at the hearing. Consequently, it does not appear that the Applicant was holding back this evidence to spring it on the Opposer at this late stage. Citing 2212-11-12 Merck & Co. Inc. vs. Teva (6/12/2012): To the extent that allowing this evidence to be submitted now, disadvantages the Opposer, this can be dealt with in the costs ruling. Consequently, the International Application may be submitted as additional evidence.

The Applicant has 7 days to submit the International Search Report together with an Affidavit. The Opposer will then have a further 7 days to cross-examine the signor of the Affidavit about this additional evidence. Following this, a decision regarding the future of the proceeding will be given.

Costs for this stage will be addressed in the costs ruling after the final decision.

Opposition to IL 190197, Interim Decision by Assa Kling, 14 April 2016.


In duck shooting, a decoy is an artificial duck, often made of wood, that attracts other ducks to a body of water, so that they can be shot. I assume that taking out missiles is somewhat different, and if the wrong term was used, it was more likely due to imperfect English of the patent attorney, possibly mislead by the inventor who typically has even poorer English. It is unlikely that there is an attempt to mislead.