Background
Patentability requires that a patent is novel, inventive and useful at the priority date, which is the effective filing date.
The Novelty requirement is absolute, but there are three exceptions given in Section 6 of the Israel Patent Law 1967:
- A publication of the invention without consent of the patentee is not novelty destroying, provided that patentee files an patent application promptly on learning about the publication;
- Display at a exhibition is not novelty destroying, provided a patent application is filed within six months;
- A scientific lecture is not novelty destroying, , provided the registrar was given advanced warning and a patent application is filed within six months.
Section 164 gives the Registrar (Commissioner) wide discretionary powers to extend missed deadlines.
In this ruling, the Deputy Commissioner considers whether the advanced warning of Section 6(3) can be extended retroactively under the discretionary powers given by Section 164, i.e. if the Applicant can inform the Commissioner of a scientific lecture post facto and pay extension fees, so that the lecture by the inventor is not considered as novelty destroying prior art.
The Case
On 6 March 2012, Otsuka Pharmaceutical Co. Ltd. filed Israel Patent Application Number 218495 as a National Phase Entry of PCT/JP2010/053032 titled “Therapeutic Agent for Chronic Pain” that was itself filed on 26 February 2010. The PCT application claimed priority from JP 2009-211021 filed on 11 September 2009.
On 27 August 2009, i.e. before the priority date, the “Conference Proceedings of the 69th Tohoku District Meeting of the Japanese Society of Psychosomatic Medicine” were published. One of these was titled “An example of complete response of ariprazole against refractory head and neck pain associated with depression”.
A significant amount of the scientific work that was the basis of the patent application and of the conference paper was disclosed in a lecture on 12 September 2009. The Patentee claims that the PCT application was filed within six months of the abstract, and claims priority from the priority application and so the PCT application benefits from the grace period under Section 30 of the Japanese Patent Law.
On 22 July 2010, prior to entering the national stage in Israel, the Agent for Applicant requested an extension to the deadline of Section 6(3). The Head of the PCT Department refused this, since the notification of the publication was not provided in advance, and he considered that only time limits given in the Law can be extended.
On 15 August 2010, the Applicant responded that they would file a second request on entering the national stage into Israel and would provide written and verbal arguments justifying an exception, and, on 16 May 2011, a further notice refusing the extension was issued by the patent office.
On subsequently entering the National Phase into Israel, and with reference to Section 48D(a) of the Law, the Applicant noted that, prior to entering the national phase into Israel, they had requested an extension to Section 6(3), and appended the decision of 16 May 2011.
During the Examination, the abstract from 27 August 2009 was cited against the claimed invention as being novelty destroying. Consequently, the Applicant requested a hearing to discuss whether the Section 6(3) deadline is extendible and, if so, whether the circumstances in question justify the Commissioner retroactively extending the deadline under section 164.
Discussion
Sections 6 and 164 are reproduced below:
- The right of the owner of an invention to be granted a patent shall not be affected by publication said in section 4—
(1) if it is proved that the matter published was obtained from him the owner of the invention or his predecessor in title and was published without his consent, and if the patent application was filed within a reasonable time after the publication became known to the applicant; or
(2)(a) the publication was by the owner of the invention or his predecessor in title in one of the following ways:
(i) display at an industrial or agricultural exhibition in Israel or at a recognized exhibition in one of the Convention States, of which official notice was given to the Registrar before its opening;
(ii) publication of a description of the invention at the time of a said exhibition;
(iii) use of the invention for the purposes of the exhibition and at the place of the exhibition;
(b) the publication was by use of the invention, even without its owners’ consent, at the time of the exhibition, at the place of the exhibition or outside it, on condition that the patent application was submitted within six months after the exhibition opened;
(3) publication was by way of a lecture by the inventor before a scientific society or by publication of the lecture in official transactions of the society, on condition that the Registrar was given notice of the lecture before it was delivered and that the patent application is filed within six months after the aforesaid publication.
Section 6(3) lists three conditions, that if fulfilled, render the prior publication as not damaging to the patentability of the patent. The first condition relates to the nature of the publication and to the reasons for it happening. In this instance, it relates to a lecture by the inventor before a scientific society or the publication of the lecture in the formal society conference proceedings. There is no doubt that the publication in question fulfills these conditions.
The third condition relates to the period from which the publication occurs and the date of filing of the patent. The proceedings were published on 27 August 2009, and the international publication was on the 26 February 2010. The Applicant claims that one should see the date of filing of the PCT Application designating Israel, as being the date as far as Section 6(3) is concerned. The Deputy Commissioner, Ms Jacqueline Bracha considers that the Applicant is correct in this regard.
Section 48(c) of the Law is an exception to Section 15 that states that a PCT Application designating Israel, receives a date as per the PCT Convention:
48C. The provisions of this Law shall apply to applications addressed to Israel, with the changes specified in this Chapter and with the changes specified below:
(1) the provisions of sections 11, 14, 15, 17(a) and 20 shall not apply;
(2) the provisions of section 16 shall apply to an application, in respect of which the applicant met the conditions prescribed in section 48D;
(3) the date of the application shall be determined in accordance with the provisions of the Convention;
(4) the provisions of section 165(a) shall not apply to information published under the Convention in respect of applications;
(5) notwithstanding the provisions of section 168(a), documents published according to the Convention in respect of applications shall be open for public inspection.
In accordance with Section 11(3) of the PCT Conventions, the filing date of the PCT application is considered as the National Entry Date in all designated states:
“(3) Subject to Article 64(4), any international application fulfilling the requirements listed in items (i) to (iii) of paragraph (1) and accorded an international filing date shall have the effect of a regular national application in each designated State as of the international filing date, which date shall be considered to be the actual filing date in each designated State.”
In light of this, the effective filing date in Israel is the filing date of the PCT Application designating Israel, and so the Applicant has fulfilled Section 6(3) of the Law.
The Applicant does not dispute that he did not fulfill the second condition requiring informing the Commissioner of the lecture before it happened. However, he alleges that it is within the Commissioner’s Authority to extend this deadline using the powers granted to him under Section 164 of the Law.
Patent Deadlines are generally extendible, apart from the deadline for filing an opposition, the deadline at which a patent lapses (but can be restored), the grace period for renewals, and deadlines relating to patent term extensions. Other than these, the Registrar (Commissioner) has wide discretion to grant extensions. This is clear from Section 164 of the Law, repeated below:
164.—(a) The Registrar may, if he sees reasonable cause for doing so, extend any time prescribed by this Law or by regulations under it for the performance of anything at the Office or before the Registrar, except for the times prescribed in sections 30, 56, 57, 61, 64F, 64M; however, for purposes of section 10—
(1) the Registrar shall not extend the time prescribed by subsection (a)(1), unless he is satisfied that the application in Israel was not submitted on time because of circumstances over which the applicant and his representative had no control and which could not be prevented;
(2) the Registrar shall extend the time prescribed by subsection (a)(2) only as long as the application has not yet been accepted and if he is satisfied that a mistake was made innocently.
(3)The Registrar may make the extension of times conditional on conditions as he deems fit.
(c) An application for extension of a time may be submitted within the time or after it.
(d)Notwithstanding the provisions of subsections (a) and (b) and the provisions of any other Law, if the last day of the period prescribed in section 10(a)(1) falls on a .day that is not a work day, then the period shall end on the first work day thereafter; this provisions does not derogate from the power to extend beyond the time prescribed in section 10(a)(1).
The Examiner considered that this condition is not a deadline that can be extended and so the Commissioner does not have jurisdiction under Section 164.
The Deputy Commissioner notes that as far as the publication in question is concerned, the Applicant acted in good faith opposite the Patent Office. Firstly, even before entering the national phase the Applicant requested an extension to inform the patent office, when filing, he noted the request on the Application form and listed the reference in the list of disclosed prior art in accordance with the duty of disclosure under Section 18 of the Law. When discussing the requirement in the hearing, the question arose as to whether the Applicant should have appealed Dr Bart’s ruling. Perhaps the Applicant should have Appealed under Section 161 but the Deputy Commissioner does not consider it too late to discuss the issue substantively, nor does she consider the failure to appeal as being inequitable behavior.
The main issue under discussion, is whether the requirement to provide advanced knowledge of a publication is a deadline that can be retroactively extended under section 161, i.e. whether this is an exception to the rule.
To answer this question, it appears appropriate to consider the underlying purpose of the condition and its source. Section 11 of the Paris Convention for the Protection of Intellectual Property 1883 states that the signatory states should provide temporary protection for a period not exceeding that defined in section 4 of the Convention (grace period) for displaying an invention or design at an official exhibition. Indeed, allowing exhibited goods to be protected was one of the aims of the convention:
“(a) Since lack or inadequacy of protection of industrial property at international exhibitions was one of the reasons which promoted the conclusion of the Convention, it is natural that the principle of such protection should already have been included in the original text of the Convention of 1883. It was then the intention to oblige the member States to take necessary legislative measures to that effect but to leave them free in determining the ways and means of achieving this end.”
GHC Bodenhausen Guide to the Application of the Paris Convention for the Protection of Industrial Property, as Revised at Stockholm in 1967 (1968) page 149.
Since the individual states had wide discretion regarding their national legislation and the administrative requirements for obtaining this protection, the basis for the pre-exhibition notice, which is largely unique to Israel, is not part of the convention itself. Additionally, examination of the pre legislative proposed law does not provide an explanation.
The Law in many jurisdictions does not require a pre Exhibition notice of intent to exhibit to be submitted to the patent office. The Japanese Patent Office requires sub mission of the patent application together with a notice within six months of the exhibition. (See Hiroya Kawaguchi “The Essentials of Japanese Patent Law” (2007) p. 31.
A similar requirement for submitting a the notice of an exhibition together with the application is found in Section 55 of the European Patent Convention:
“(1) For the application of Article 54, a disclosure of the invention shall not be taken into consideration if it occurred no earlier than six months preceding the filing of the European patent application and if it was due to, or in consequence of:
(a) an evident abuse in relation to the applicant or his legal predecessor, or
(b) the fact that the applicant or his legal predecessor has displayed the invention at an official, or officially recognized, international exhibition falling within the terms of the Convention on international exhibitions signed at Paris on 22 November 1928 and last revised on 30 November 1972.
(2) In the case of paragraph 1(b), paragraph 1 shall apply only if the applicant states, when filing the European patent application, that the invention has been so displayed and files a supporting certificate within the time limit and under the conditions laid down in the Implementing Regulations.”
In the US, the exhibition of the invention is part of the one year general grace period for inventor disclosures – See §35 US Section 102b of the US Patent Law and Daniel J. Gervais International Intellectual Property: A Handbook of Contemporary Research (2015) p.45.
From here it is clear that the Israel Law is somewhat unique in requiring prior notification. In light of the difference between the Laws and the legislative being silent regarding whether or not this period can be extended, the question of the interest that the Israel Law intended to protect by requiring prior notification of exhibition or lecture becomes important.
There are three possible purposes that come to mind.
- One possibility is to protect the inventor who, prior to exhibiting or lecturing, must determine that the exhibit or lecture will not damage his future protection. By providing notification, the Commissioner can obtain the disclosure and will be reminded of the Section 6 exception. If the inventor does not receive the authorization to exhibit, he can quickly file an Application before the publication. This paternalistic rationale, even if a positive thing, is somewhat exceptional on the IP horizon.
- Another possible purpose is certainty of the public regarding whether a prior disclosure is legally and not merely factually novelty disclosing or not. In other words, the public wishes to know as early as possible, if an invention is to be patent protected or if it is in the public domain. Even if this is an appropriate aim, it is not achieved by the requirement for earlier registration under section 6(3) of the Law, since such notification is not known to the public prior to the patent application becoming available for public inspection 18 months after filing (and until fairly recently, only on allowance). At the time that the patent file wrapper is available for inspection, it makes no difference if the Patent Office was informed of the exhibition or lecture in advance or after the event. Thus the public reliance on publication is different from the reliance on national phase entry which interested parties can and do follow, see for example, 23511-05-12 Mindcake LLC vs. Israel Commissioner of Patents and Trademarks, 17 January 2013:
Thus, the extension of the national phase entry deadline is a matter of significance, since when this date passes, the invention is immediately transferred from the patentee to the public domain, who is allowed to make use of the invention according to their will.
In this instance, we cannot assume that this reliance is relevant since the public learn about the exhibition approval long after it has issued, so long as it is before the patent wrapper itself is open for inspection.
3.A third aim might be to provide the Commissioner with the tools to determine whether a prior art publication is indeed at a scientific or recognized exhibition or not. For such an aim, the Deputy Commissioner does not consider that prior notice makes much difference. The onus is on the patentee to convince the Commissioner, who is not required to make investigations. So in cases where the Applicant is unable to convince the Commissioner that the exhibition should not be novelty destroying, his request will be refused. From here it is clear that any evidentiary problems will work against the Applicant and we therefore return to the first suggestion that the purpose is to protect the Applicant.
This is not the first time that the Court of the Patent Office has considered this issue. In re IL 68447 to Byong Wha Suh (published on 29 February 1984), the Commissioner was petitioned to extend the Section 6 time-frame. After considering the European Patent Law, the Commissioner reasoned that one could indeed extend the deadline for informing the ILPO and reasoned as follows:
“We state immediately that in our Opinion, section 164a of the Israel Patent Law is sufficiently broad to allow the Section 6(2)(a)(1) deadline to be extended.
The Section allows deadlines that are stated in the Patent Law or the Regulations to be extended, and the wording is not limited to procedural deadlines (such as the deadlines for filing and responding in contentious proceedings), but also allows extensions of deadlines that can affect the validity of a patent. This can be learned from the wording of Section 164 which specifically excludes extending deadlines for paying renewal fees for lapsed patents. This teaches that the legislative body did not see fit to prohibit other deadlines being extended at the Commissioner’s discretion.
It is true that there is no positive reference to Section 6(3) in Section 164 of the Law. Section 164 does, however, allow the Commissioner to retroactively allow extensions. The Applicant is correct in his claim that “so long as the Commissioner receives notification of the lecture before it is given” relates to time limits, even if not explicitly. It is also clear that this time passes with the lecture and so any time thereafter misses the stated deadline for the action.
To the extent that the advanced deadline is paternalistic, prohibiting extending the time limit will not enable the intent to be achieved. From here, the Deputy Commissioner deduces that the Commissioner (and by transfer of powers, she herself) has the authorization to extend the time limit.
It is true that the Commissioner has wide discretionary powers under Section 164, the extent of which changes with circumstances. Application of Section 164(a) to give a retroactive extension will be depend on the nature of the process, the specific circumstances, and the weighing up of the Applicant’s interest and the public’s interest. See Appeal 2826/04 Recordati Ireland Ltd vs. Commissioner of Patents, 28 October 2004.
Section 164 of the Law, cited above, that allows the Commissioner to extend deadlines, does not extend to all of the dictates of the Patent Law (for details of the things that the Commissioner does not have discretion to extend deadlines, see Friedman page 172-178). In this instance, the Court of First Instance correctly noted that the Commissioner can extend deadlines before or after they pass, as stated in section 164(c), so long as he sees a reasonable justification for so doing, but the issue is not one of legal authority, but rather of the correct use of that authority. In Appeal 248/95 Fabio Perini S.P.A v. ‘Industrie Meccaniche Alberto Consani S.P.A., Judge Winograd considered the correct interpretation of Section 164 of the Law (in the original version prior to the third amendment). The Court supported the liberal interpretation granting extensions for filing Oppositions, stating that Opposer serves the public interest and the integrity of the Register, and not merely his own interest by filing Oppositions, and the range of things that the Commissioner is allowed to extend is wide.
As ruled in the IL 110548 Opposition Shmuel Sadovski vs. Hugla Kimberly Marketing Ltd. (12 August 2010), the relevant considerations for deciding that a justification is reasonable is the extent of the delay and the explanation for it. The extent of the delay can affect not just the perceived behavior of the Applicant and whether it is reasonable, but also whether the public can be considered to have relied on that behavior.
In this instance, the Applicant first approached the committee with explanations that do not seem unreasonable. The difference between the Israel Patent Law and that in Japan and many other countries goes a long way to justify the mistake made. Indeed, the Applicant made a submission via their attorneys, prior to entering the national phase so as to address the issue as early as possible. As to third parties relying on the delay, it does not seem that this can be construed as being in any way connected to them not contacting the Patent Office prior to the lecture, as explained hereinabove.
Nevertheless, this ruling is given ex-partes at the request of the Applicant, without the public being represented, and at this stage third parties do not have standing. Third party standing will only occur if and when the patent is allowed. In light of the above, the Deputy Commissioner rules that the application can continue to examination without the prior publication in the form of the lecture acting as novelty destroying prior art, using discretion under Section 164 (b) of the law which states “The Commissioner is authorized to extend deadlines as he sees fit”.
Conclusion
The request is accepted and the deadline for informing the patent office is retroactively extended on condition that a fee be paid from the time of the publication of the Application having been filed on 27 August 2009, until the national phase entry into Israel on 6 March 2012. It is noted that the submitted notice that informed the patent office of the prior disclosure was rejected by the Examiner, and the Applicant could have appealed that decision within 30 days, so extension fees would anyway be due.
The retroactive extension is granted contingent on any Oppositions submitted after allowance being considered on their merit, with the issue of this extension being considered legitimate grounds for inter-partes challenge.
Ruling by Ms Jacqueline Bracha re Section 6 publication of IL 218495, 24 September 2017
The Festival of Pesach celebrates Human Freedom and the birth of the Jewish people.
Posted by Dr Michael Factor 
I try to be factually accurate and helpful to my readership. However, occasionally mistakes happen. A couple of days ago I posted about the 
I’d like to think that the conference organizers follow my advice, and I do note that some of my criticisms of the first and second International Conferences have been addressed this time around, but I doubt that within a couple of days of my posting my criticism, the organizers would disinvite two such distinguished speakers. Nevertheless, they are not coming.
Instead the current program as advertised has a video greeting from Mr. Francis Guri [sic], WIPO president – a gimmick I enjoyed at a premiere cercle IP conference last year. Watching a VIP on-screen is not that exciting as in the flesh, and to be honest, I don’t think there is a major demand for autographs from WIPO presidents. (Indeed, when I was Guest of Honour at 
The opening session is instead being given by Judge (retired) Asher Grunis, President of the Supreme Court of Israel 2012 – 2015 on “Judge made law in the field of intellectual property”. Judge Gronis gave several IP decisions over his long and illustrious career, such as Toffiffee, Adidas, 
Judge Grunis’ talk is being followed by one by Mr. Aharon Aharon, CEO, Israel Innovation Authority. The title of Mr. Aharon Aharon’s talk is not published in the program, but it is clear that he has some influence over Israel govt. policy regarding promoting innovation.
KGaA & Henkel AG filed a series of Israel trademark applications (Nos. 258658, 258797, 258798 and 259500 as shown alongside.
The need for the public and the manufacturer to rely on the shape of the product as an indication of the source of the product is required for it to be registerable has been discussed recently in the UK decision [2017] EWCA Civ 358 Société des Produits Nestlé SA v. Cadbury UK Ltd. (Kit Kat). In this ruling, the court affirmed the ruling of two lower courts that the shape of the KitKat snack bar is not registerable. In that case, the issue of the burden of proof for registering a product shape was referred to the CJEU:
Those respondents that responded positively to the first question were asked if the product was known in Israel. The Deputy Commissioner considers this is less relevant since it surveys what the respondents thought and not how well known the product was. In the next stage, the respondents were asked if they were familiar with other products of the same manufacturer and 65% were unaware of any other products or were not sure in their response.
In the final survey, the respondents were asked who manufactures or markets the product. This was a multiple choice question with the options Henke, Sod, some other supplier SPECIFY and do not know/not sure. This is a closed-ended leading question similar to that discussed in Opposition 112645 Mei Zach (Clear Water) Shlomo Zach vs. Teneh Industries 1991 ltd from 12 July 2007. Two of the four answers were correct. The others required the respondents to admit to not knowing or to suggest an alternative themselves. It is hardly surprising, therefore, that most respondents answered correctly. Furthermore, the respondents who answered correctly were not even required to remember the manufacturer/supplier’s name themselves….
Mr Rohnak was asked about this during the hearing and responded that respondents are not ashamed to answer that they do not know, and so their choosing a correct answer is significant and indicates knowledge. Mr Roshnak did not think that wording the question differently and giving names of other manufacturers of hygiene products would have led to a different result. This response is speculative and is beyond his competence since it does not relate to making surveys and drawing results but rather to anticipating responses to questions not asked. The fact that most respondents elected “Sod” and not “Do not know” certainly raises the suspicion that the respondents answered that way as the question led them to do so, or because the way the survey was constructed led them to believe that this was the desired response.
Moshe Lavi owns Israel Patent No. 157035 titled “MODULAR SUPPORT BRACKET” which describes a support bracket for an air-conditioner unit. He’s tried to enforce it in the past against Zach Oz Airconditioners LTD, and the parties came to an out-of-court settlement.
The attempt to roll these unnecessary costs to the losing side and the double charging for the expert witness are inappropriate to use an understatement, and one assumes that these requests were made inadvertently as they were signed by educated attorneys that are well versed in the relevant legal processes.
Israel is a member of the Lisbon Convention for the Appellation of Origin. This is an international convention beloved of the French and frowned upon by the common law countries. Essentially food and drink associated with certain places is entitled to wider protection than mere trademark protection, so that only Scotland can make Scotch Whiskey. Only France can make Champagne and Cognac. Parmesan cheese and hams must come from the Parmesan region of Italy, and so on.
Calling something Jaffa, Jaffas, or in Hebrew יפו, יבא, יפאס is not merely a trademark infringement, but also infringes the special law governing this appellation of origin “The Law for Protecting Origins and Indication of sources 1965” gave special protection for Jaffa and variant spellings for citrus fruits. Subsequently, special amendments to the Trademark Ordinance in 1968 widened the protection of the Jaffa mark to prevent its usage for a wider range of goods, and forbade marks that include the word Jaffa as only part of the mark. The amendment to the trademark ordinance takes this protection very seriously, and instead of merely providing financial remedies, prescribes incarceration for infringers.
Back in the Sixties, Israel was 
Judge Hendel’s 
The various professional organizations representing the IP profession in Israel (LES, AIPPI and IPAA) cosponsored a reception to honour outgoing Commissioner Asa Kling and incoming commissioner Alon Ophir.
Nachman Cohen-Zedek, as the last of the dinosaurs, spoke some words of introduction. I could not tell what he said, and nor could the other participants sitting in my area. The acoustics were poor and most of the speakers forgot to talk into the microphone. Asa used a projector to show a power-point presentation, however, it was out of focus and poorly illuminated, so apart from noting that the talk was illustrated with a steady increase in pink clouds with writing on them, I can’t actually report what he spoke about.
As he is wont to do at various events, Dr Zebulum Tomer took the microphone, ostensibly to ask a question but in practice to give a little speech. He clearly believes that his one man crusade against poor pharmaceutical patents is a public service, which it is. However, those developing drugs are also serving a public interest. I don’t think anyone needed reminding that he is not an attorney but an industrialist. He reminds everyone at all events. The lawyers present generally look down on industrialists, and are certainly jealous of his competence in opposing patents which outshone that of anyone present. The patent attorneys probably were a little jealous, still half wishing we actually made something instead of pushing paper.
The person compering the event noted that Alon Ophir is the second commissioner named Ophir and that we will have to relate to him as Ophir the Second or some such to avoid confusion. This was a reference to former Commissioner Martin Oppenheimer who Hebracised his name to Michael Ophir. Commissioner Ophir seemed very young. He is a Kippa wearing practitioner which fueled speculation about whether his appointment reflected activism in Bayit Yehudi, the political party that the Minister of Justice represents. The press releases about Commissioner Ophir’s appointment mentioned how impressed the committee was regarding his vision. I was disappointed that he did not explain what his vision was. He noted that obviously outgoing Commisioner Kling did a great job, what does seem to be his focus is in decreasing pendencies and making the patent office ever more efficient. He expressed surprise and disappointment that more Israeli applicants were not first filing in Israel and accelerating examination to get an opinion before having to file abroad and applying the discount when filing PCT applications. He attributed the failure to ‘probably inertia’. Whilst accepting that some practitioners do use time-honoured strategies without consideration of changes, I don’t think this is the whole answer, and hope that the commissioner tries to listen and discuss with the profession instead of assuming that they are all lazy. I had to leave early as I had a ride with another attorney, who on leaving the hall early told me that we would be stuck in traffic. I suggested that perhaps we should go back in and leave later. He thought for a minute and said that he’d prefer to be stuck in traffic. I think this says it all.
