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

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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.

 


Can a Patent Term be Extended in Israel on the Basis of a Patent Term Adjustment in the US?

February 8, 2016

calendar

Most patents are renewable up to 20 years from filing. The exception is basic pharmaceutical patents which may be renewed until 25 years from filing to ensure at least 14 years of post regulatory approval in Bolar countries.

The Israel Law relating to pharmaceutical extensions is complicated and has been amended several times. It is based on the Hatch Watchman Act in the US, and was legislated in Israel under a great deal of pressure from the United States. The Amendment itself has been amended a couple of times. Because of the large sums of money involved, drug development companies are willing to spend a small fortune to obtain extensions and Unipharm and Teva frequently oppose such extension periods.

Novartis applied for an extension for IL 154465 titled IL-1BETA BINDING MOLECULES AND USE THEREOF IN THE PREPARATION OF PHARMACEUTICAL COMPOSITIONS AND MEDICAMENTS.

The active ingredient is known as Canakinub, and this received regulatory approval in October 2010 under the trade name ILARIS.

In this instance, regulatory approval preceded allowance of the patent so Applicant requested an extension of the period for requesting an extension of the patent as defined in Section 61(XV). The patent was granted on 1 March 2011 and following this, the patentee requested an Extension.

It transpired that requests for extensions were filed in the US and in most of the European countries that can be used as the basis for a request for patent term extension as detailed in Appendix B to the amendment.

In the US, there are Patent Term Extensions (PTEs) which may be used as the basis for requesting a corresponding extension in Israel. But there are also Patent Term Adjustments (PTAs) which are not to be confused with Parents and teachers Associations considered different things entirely. The PTA is granted to compensate for delays attributed to patent office tardiness in the USPTO. They do not have anything to do with ensuring a term of enforcement from regulatory approval.

In this instance, the Patent Term Adjustment exceeded the theoretical Patent Term Extension so no Patent Term Extension was granted. In other words, there was regulatory approval in the US which starts the clock for usage. However, the corresponding US Patent never was extended by a PTE. The Israel Examiner therefore rejected the request to grant a PTE in Israel as there was no PTE in the US to consider under Section 64(IV)5.
Novartis were not happy with this decision and requested a hearing before the Commissioner on 17 February 2015. They submitted written arguments on 22 June 2015, a hearing was held on 22 July 2015, and on 11 August 2015 a supplementary affidavit was submitted by a Ms Leslie Fisher (maybe that should be Lesley?).

After the 11 amendment to the Israel Patent Law of 27 April 2014, Novartis requested an extension based on the Notice of Final Determination:

“A determination has been made that U.S. patent No. 7,446,175, claims of which cover the human biologic product Ilaris® (canakinumab), is eligible for patent term extension under U.S.C. § 156. The period of extension has been made determined to be 0 days.

The period of extension, if calculated using the Food and Drug Administration determination of the length of the regulatory review period published in the Federal Register of December 9, 2010 (75 Fed. Reg. 76739), would be 205 days.

Because the patent term adjustment awarded to U.S. Patent No. 7,446,175…of 1,131 days extends the original expiration date to September 24, 2024, which is beyond the 14 year exception of 35 U.S.C. 156(c)(3), the term extension is 0 days…”

(the underlying is by the Commissioner Assa Kling (we suspect that Novartis would have preferred not to draw attention to it).

Essentially what happened was that the US patent was in force for over 14 years due to the Patent Term Adjustment, so no Patent Term Extension was required.

The commissioner noted that the PTE was zero days and that section 64(I) of the Law states explicitly that an Extension of the basic patent relied upon has to be for one day or more and that this is referred to in the US as a Patent Term Extension (PTE) and in Europe a Supplementary Protection Certificate (SPC).

The Applicant has a different understanding of the correct interpretation of the Law based on its purpose and the legislative’s intent and argued that there was a lacuna. However, the differences between PTEs and PTAs was discussed in a ruling concerning a patent term extension for IL 181673 to Genetech.

The law, the previous decision and common sense implies that if the drug has patent protection of 14 years from first regulatory approval it does not deserve a patent term extension in Israel. Furthermore, the Commissioner referenced the understanding reached between Israel and the United States

“A reference PTE which results from marketing authorization delays means any period extending the Basic Patent by one or more days, up to the maximum period allowed under the Patent Act.
“…However, if a reference PTE has not been granted (either as an interim or final PTE Order) in the United States and at least one EU reference country prior to the expiration of the underlying Basic Patent in Israel, then no PTE (interim or final) shall be granted in Israel in respect of that Basic Patent.”

This supports the Law as formulated and the Commissioner’s understanding.
The rejection of the request for a Patent Term Extension in Israel was upheld despite the Applicant having been given an opportunity to present his case before the commissioner as per section 152 of the Law.
COMMENT
I am convinced by the ruling. I suspect it may be appealed though.


Subsidizing Israeli Colleges of Further Education to File Patents in Israel

January 11, 2016

college discounts college discount 2

In a new regulation that came into effect at the beginning of the year, colleges of higher education that are recognized by the Committee that recognizes Israeli institutions granting degrees are entitled to a discounted filing fee.

Whereas regular Israeli applicants and foreign applicants, including universities and colleges have to pay 2017 Shekels, the Israeli colleges are entitled to a 40% discount.

For the past year or so, individual Israeli inventors and  companies with minimal income are entitled to such discounts, and I note that in the US there are different fees for micro-entities, small entities and large companies excluding colleges, so Israel is not alone in this. Nevertheless, I fail to see justification for favouring Israeli colleges of education.

The general justification for the patent system is that a limited monopoly is provided in return to teaching something new. College academics publish papers anyway.  That as may be, if such colleges have tech transfer companies and file patent applications in order to license them or spin off a start-up company in their incubator, why shouldn’t they be treated like any other commercial institution?

There doesn’t seem to be a need to provide incentives to colleges to file patent applications as the Israel universities are among the most prolific Israeli applicants anyway, with the tech transfer companies of the Weizmann Institute, Hebrew University and Ben Gurion University all appearing in the list of the top ten most prolific local filers for 2014, and the Technion tech transfer and Yeda (Weizmann tech transfer) appearing in the list of the top ten most prolific local patentees of 2014.

I am wondering whether a discount in filing fees per application of 807 Shekels or just over $200 provides any incentive to the tech transfers to file patent applications? Is there any national agenda that provides a logic for encouraging them to file applications in Israel? If there is some justification for a policy of encouraging Israel universities to file patents, why not ear-mark some government funding for this purpose instead of blatantly discriminating against foreign universities – not that a $200 will likely impact their patenting strategy either.

I generally advise clients to first file in Israel. There are some attorneys that advise first filing a US provisional application. Does a $200 discount affect the advice one would provide to a college or university? I am not convinced.

 


US Patent Law for European Patent Professionals

November 26, 2015

nemeth

I was given a copy of US Patent Law for European Patent Professionals, by Audrey Nemeth to review, read it quite quickly and forgot to publish something. Now that the IPKAT has published a review, it has spurred be to get around to this myself.

The IPKAT’s review is here.

The book was written by a European patent attorney whilst preparing for the US patent agent license. It looks at US Patent Law from a European perspective.

Bibliographic data: hardback, xxviii + 215 pages. ISBN 9789041160447. Book’s web page hereAudrey Nemeth’s blogpost introducing this book on the Kluwer Patent Blog is here.

One of the most interesting points that it raised is the different histories behind the patent laws and the different basic philosophies that affect terminology, prosecution and patentable subject matter.

In Europe, for a patent claim to be valid it must describe an invention having novelty, utility and inventive step. In the US one requires novelty, utility and non-obviousness. I expect that most practitioners are aware of this, but haven’t necessarily thought about the difference in any depth.

As a result of this book showing the two systems side by side I realized that in Europe there is a basic philosophy employed by the Examiners during examination, that to deserve a patent, one needs to actively improve on the existing, by having an inventive step, whereas in the US, one is entitled to a patent for anything new under the sun made by man, unless it is obvious in light of the prior art.

Though similar, these concepts are not the same. In Europe, having dismissed the main claims as lacking novelty or inventive step, the Examiner may state that the dependent claims do not provide anything sufficiently significant to be considered as being an inventive step. In the US, however, the Examiner starts from the assumption that the invention is patentable and feels obliged to show how each and every claim is anticipated or obvious in light of prior art and established doctrine.

It is this fundamental difference in approaches which explains why the USPTO traditionally awarded the patent to the first to invent and even after the American Invents Act which further closes the gap between the two systems, will consider prior disclosure by the inventor as not necessarily preventing him from obtaining a patent.

Veteran Israel Practitioner David Gilat has said on many occasions that the Israel Patent Office’s job is to issue patents and there is an assumption of patentability that has to be overcome for an application to be refused. I was never convinced by that argument and on balance think that in this issue as in many others, Israel is closer to Europe and this is why during opposition proceedings, although the onus is on the opposer to show that the Examiner was wrong to allow the patent, nevertheless there is no assumption of validity. Putting aside the philosophical aspects, the book is helpful in understanding the procedural differences in both jurisdictions.

Audrey Nemeth suggests that it is sometimes justified having different parallel applications drafted for the US and Europe. I find this a little excessive and don’t imagine many clients would be willing to pay twice to have the same application drafted twice. I can, however see value in having licensed practitioners in both jurisdictions critiquing an application.

A personal note

I am not licensed in Europe or in the US, but for most of my clients, the US is the #1 patent jurisdiction. Funding and subject matter permitting, most clients see Europe as highly desirable for patent protection, although may largest client (in terms of patent work) only files in the US and the Far East, considering Europe too expensive for companies there to compete with him.

When I draft patents, I consider both the USPTO and EPO guidelines and am familiar with the differences in the maximum number of claims that don’t require excess claim fees, the different positions of the USPTO and EPO regarding multiple dependent claims, unity of invention, the two-part claim construction, preferred transition terms and annotations of the claims. I don’t prosecute directly in the US or EPO by generally provide very advanced draft responses so that the associate has little to do other than to review and put into his or her template. In most cases for the US, I use the associate’s template so that there is even less for the associate to do.

Despite 15 years of experience, and having drafted and prosecuted hundreds of patents, I found this book worth reading and useful reference to keep handy.

 

What about Japan, China and Korea?

The US and European mind-states, though not identical, reflect a Western Judeo-Christian heritage. I think that similar works covering the Korean, Japanese and Chinese patent laws would be very helpful.

I have a book in the same series that looks at IP in China. In Communist China, Intellectual Property Law preceded regular property law. I have a book on Chinese IP whose opening chapter quotes Confucius. Notably, that book has no footnotes or references to court rulings. It seems that whereas in the US and Europe, court rulings create precedent, this is not the case in China.

I know that claims that I draft are generally considered clear by European and US examiners, but often receive long lists of clarity objections in Korea.  Sometimes I can work out what the Examiner’s problem is. Sometimes I am completely flummoxed. The Examiner is, of course, looking at a translation of the English text I wrote and my copy of the Office Action is a translation of the Examiner’s comments. In this game of Chinese Whispers, I have to rely on the associate whereas in the US and Europe, we are all looking at the same English language documents.