Reconsideration of a Patent Extension Term

August 10, 2016

last minute shopping

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

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

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


Ful – the Broad-bean Ruling

July 15, 2016

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

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

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

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

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

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

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

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

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

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

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

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

 

 


IPR’s Best Practices in Intellectual Property Conference 2016

June 5, 2016

ipr 2016.jpg

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

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

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

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

sheraton.jpg

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

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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

decoy

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.

COMMENT

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.


David Kappos

May 10, 2016

200px-David_Kappos_official_photo

Kim Lindy has managed to persuade David Kappos to speak at the IPR’s Fourth Annual Best Practices in Intellectual Property conference.

David, who I have met, is a pleasant fellow who, as can be seen from this photograph, bears an uncanny resemblance to Howard Poliner, the IP Law draftsman at the Israel Ministry of Justice.

With no disrespect to Howard or to the Israel Patent Office, I think that David Kappos, who served as the Under Secretary of Commerce for Intellectual Property and Director of the United States Patent and Trademark Office (USPTO) from 2009 to 2013 is possibly even more eminent.  Prior to being confirmed to this post by the U.S. Senate on August 7, 2009, Kappos was the vice president and assistant general counsel, intellectual property law, for IBM Corporation. Nowadays David who works for the law firm of Cravath, Swaine & Moore, handles corporate mergers and acquisitions and litigation in the private section.

There was the rather erroneously called American Invents Act and there has been a series of important Supreme Court rulings that have resulted in the  US Patent Law and the USPTO undergoing major changes, particularly with regard to statutory patentable matter, with patents directed to genes, business method methods and software patents becoming more difficult to obtain and enforce. To my mind, the Supreme Court has clipped the wings of the Federal Circle Court of Appeal and I am not sure that their eminences necessarily knew what they were doing.  In other respects, US patent Law has become closer to that of the rest of the world.

I have no doubt that David Kappos will have a lot of insights into what is happening and where it might end and I applaud Kim for bringing him over. The conference is at an international level but is held here in Israel, and though I hate coommuting to Tel Aviv, it is much more convenient than Orlando or even Milan, and this conference is directed to practical issues.  For reports of previous Best Practices in IP Conferences see here, here andhere. For more details of this conference and to register, contact Kim Lindy.


Free Israel IP Consultancy

April 21, 2016

53b4219b-e7ef-4e92-acba-79f861ed7394

I usually charge for IP related advice. However, foreign patent and trademark attorneys and in-house counsel who are attending INTA’s 2016 Annual Meeting on May 22-25 in Orlando are invited to contact me to schedule a free meeting to discuss Israel IP issues.

Israel corporate IP managers can set up meetings with me at the 4th Annual Best Practices in IP Conference on May 30th, 2016 in Tel Aviv.

Furthermore, If you set up meetings in advance, I will treat you to a box of PCTeabags!


Should the Israel Patent Office be Colour-blind?

February 24, 2016

One of my esteemed colleagues in the private sector brought my attention to the following advertisement:

ראש ענף (בוחן /ת פטנטים – צוער /ת)
חברה: ממשלתית / ציבורית
מקום העבודה: ירושלים
סוג משרה: משרה מלאה, עבודה ציבורית / ממשלתית
משרה זו מדרוש /ה ראש ענף (בוחן /ת פטנטים – צוער /ת) מיועדת לבני העדה האתיופית בהתאם לחוק החברות הממשלתיות.

דרישות: תואר אקדמי בהנדסה או במדעי הטבע.
אין צורך בניסיון קודם לדרגה תחילית.
במדעי המחשב או הנדסת מחשבים ותקשורת, מכשור רפואי, כימיה אנאורגנית
או לימודי רוקחות /פארמקולוגיה
ניסיון: רצוי ניסיון בתחום הפטנטים.
כישורים אישיים: כושר ניהול משא ומתן, כושר לקיים יחסי אנוש תקינים.
ידיעת השפה האנגלית כדי קריאת ספרות מקצועית, כושר הבעה בכתב ובעל פה
ברמה טובה בעברית. המשרה מיועדת לנשים וגברים כאחד.

Roughly translated:

The vacancy for a departmental head (Patent Examiner – trainee) is earmarked for members of the Ethiopian community as per Government Companies Law.

requirements:

An academic degree in engineering or natural science (no experience is needed for a starting salary)

Cmputer Science, Computer Engineering, Telecommunications, Medical Devices, Innorganic Chemistry or Pharmacology

Experience: Patent Experience Desirable

Personal skills: negotiation ability, acceptable interaction with people

Sufficient knowledge of English to read professional literature and to communicate at a good level in Hebrew both  written and oral.

The job is equally designated for men and women.

COMMENT

I am generally opposed to all forms of discrimination including those considered as ‘corrective preference’. I think advertisments like this are demeaning. that said, there is social stratification in Israel. 25 years ago I knew an Ethiopian immigrant who was doing a Masters in the Technion. He came from a professional family in Adis Ababa and spoke excellent English. Children of Ethiopian immigrants from Gondar who were basically subsistence farmers in the third world, do not get the support with school work that my wife and I can give our children. There is certainly an education gap that leads to social problems, and unfortunately, there is some racism in Israel. The Israel Patent Office has, over the years, helped absorb Romanians, English (under the late commissioner Michael Ophir aka Martin Oppenheimer) and more recently Russians. There are a couple of Arab examiners whose jobs may have been earmarked for Arabs, so why not earmark jobs for Ethiopians?

In my village, the Ethiopians are fully integrated and our kids play together. But, with the exception of one who works for the foreign office, most are employed in respectable but non-academic type jobs, for example as bus drivers.

Ashkenazi Jews have been urbanised for two millenia. It will take generations before the different groups will be represented evenly in all professions. The issue could become mute due to marriage between different sectors. I know an English doctor who is married to an Ethiopian.

I Suppose on balance, if an Ethiopian examiner can serve as a role model and integrate Ethiopians more successfully, it is a good thing. Nevertheless, earmarking a job for one group invitably discriminates against others. Amarhic is not a useful language for an Examiner. A European immigrant bringing in addition to English, one or two other languages that help deal with technical documentations would strengthen the searches and examinations done by the Israel Patent Office.

So is this a positive devlopment? Feel free to comment.

 


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