Coexistence Agreement Rejected and Attorney Accused of Conflict of Interest

August 17, 2016

Kennedy Electricity and Assets Ltd filed Israel Trademark Application Number 246560 for “Belissima”.

Belissima

The application was filed on 15 May 2012 in class 8 for “hair straighteners, hair removers and hair curlers, electrical tongs, shavers et al.” and for hair dryers in class 11. The original application was for a somewhat wider range of goods, but this was narrowed in response to an office action on 31 July 2014.

Bellisima ImetecBefore this mark was registered, the Tenacta Group S.p.A. filed Israel Trademark Application Number 251952 for “Belissima Imetec”. The application was filed on 26 July 2012 under International Application Number 1140345 claiming priority from European trademark number 011073319, and was submitted for “Electric and electronic apparatus and instruments for curling, cutting, waving, straightening, styling, trimming hair; electric epilators; electric pulsed light epilators; electric razors; electric and non-electric apparatus for cutting nails; manicure sets, pedicure sets; electric apparatus for removing, softening nails, corns, bunions ; in class 10 for Ultrasound electric apparatus for medical purposes for cleaning the face and reducing wrinkles; electric radio-frequency apparatus for medical purposes for reducing wrinkles and toning the skin; electric apparatus for the care of skin and acne; electric apparatus for medical purposes which vibrates or rotates for the cleaning of the face, body and for massaging the body; electric apparatus for medical purposes for microdermabrasion and electrostimulators for toning the body”; in class 11 for “hair drying apparatus, electric; heated or LED apparatus for reducing blemishes or imperfections on the skin; electric apparatus for drying nail polish or for decorating the nails; steam facial apparatus (saunas)” and in class 21 for “Electric and non-electric apparatus for removing make-up; brushes and sponges for body care; combs”.

On 7 September 2015 the Trademark Department at the Israel Patent Office informed the applicants that in view of their not reaching agreement, a competing marks procedure would ensue under section 29 of the Trademark Ordinance 1972. On 21 September 2015 the parties submitted a joint statement to the effect that they did not consider the marks confusingly similar and would cooperate to prevent confusion and mistakes by the public. On the basis of this agreement the parties requested that the Section 29 objection be removed.

On 22 October 2015, the Examiner refused to retract the competing marks assessment and to allow coexistence, resulting in the case being transferred to the Commissioner for judicial review.

edward scissorhands

On 9 November 2015 the parties submitted their coexistence agreement to the Commissioner of Patents and Trademarks. The parties agreed between themselves that the marks could be registered in parallel. The Tenacta Group undertook to only use the term Belissima in conjunction with either Imetec or Italia to differentiate between the marks. The parties stated that the term Imetec is a trademark that is associated with  the Tenacta Group. Furthermore, the parties undertook to clarify any confusion, should it occur.

In her decision of 18 November 2015, the Deputy Commissioner Ms Jacqueline Bracha rejected the coexistence agreement. In that decision she ruled that:

From the agreement it transpires that not only is there no difference in the goods sold under the two marks, but that the first applicant (Kennedy Electricity and Assets ltd.) would be the distributor of the Tenacta Group’s products.

So the parties were invited to state their claims.

sweeneytoddOn 2 March 2016 the parties submitted a joint notice that the first applicant (Kennedy) will remove all goods in classes 8 and 11 from their application, and the Patent Office was asked to reconsider its ruling in light of this development.

In her ruling of 3 March 2016, Ms Bracha stated:

“After reviewing the details of the goods covered by the two marks it is possible to accept the coexistence agreement on condition that ‘combs’ are removed from the list of goods in class 21 for the 251952 mark and that the 246560 mark be combined with Kennedy’s logo and only used therewith. These conditions are intended to protect the public from confusion since the relevant public and the distribution channels are identical.”

Following this decision, the parties submitted additional notices. On 10 March 2015, the Tenacta group announced that its application was only for the stylized mark shown above that includes the term INTETEC and that its mark was for registration in classes 10 and 21 only, and that Kennedy was not attempting to register its mark for goods in those classes. Consequently there was no reason not to allow coexistence. However, Kennedy claimed in a notice of 13 March 2016 that it was not prepared to limit its application to goods carrying the Kennedy logo together with the stylized Belissima mark since it was not marketing the Belissima brand under the Kennedy logo, and they requested reinstatement of the competing marks procedure.

Following Kennedy’s submission, Ms Bracha gave the parties two months to submit their evidence. Some days later, the Tenacta Group again requested coexistence of the marks. On 18 April 2016 Ms Bracha again requested that the parties submit their evidence. On 19 April 2016, the Tenacta Group restated that the parties had reached agreement and that the marks could coexist. On 20 April 2016 Ms Bracha ordered the Tenacta Group to clarify how their notice fulfilled her request. In the same decision it was clarified that this clarification did not extend the deadline for submission of evidence. On 2 May 2016, the Tenacta Group detailed why coexistence was in order. Read the rest of this entry »


Big Deal

July 20, 2016

big deal

Israel trademark Application Number 131862 to H.A.B. Trading LTD is for the words “BIG DEAL” for Shop services for toys, kitchenware, disposable articles, houseware, clothing for children, and drawing books in class 25.

Yidiot Internet filed a request to have the mark canceled.

For those of you wondering what’s the big deal, the following images may help clarify:

H.A.B. Trading have stores of discounted goods and Yediot Internet (YNet) has an internet special offer website.

H.A.B. Trading LTD has now requested that Yidiot Internet’s counter-evidence be deleted from the file. Yidiot countered the request, but H.A.B. Trading did not respond before 15 June 2016 when Ms Yaara Shoshani-Caspi, Adjudicator at the Israel Patent Office gave the following decision.

The mark owner (H.A.B. Trading LTD) claimed that Yediot Internet were tardy and missed the deadline for filing their counter-evidence with the court and with the mark owner.Furthermore, the counter-evidence was unacceptable in that it was not provided as an affidavit, did not include a warning from the attorneys to tell the truth or suffer the consequences, and did not include the title “expert opinion”.

Yediot Internet responded H.A.B. Trading LTD’s request for cancellation was niggardly and superfluous. They consider that the counter-evidence was timely filed, were in the appropriate form, and if the court rules otherwise, they should have an opportunity to repackage the response in an appropriate manner.

RULING

The correct way to present evidence in a trademark proceeding are given in regulations 38 and 40 of the trademark regulations 1940.

Regulation 38 states:

The opposer has to submit all his evidence within two months of receiving the applicant’s response.

Regulation 40 relates to the response to the opposer’s response to the applicant’s evidence and states:

In response, the opposer may submit counter evidence within two months and deposit a copy with the applicant.

Ms Shoshani-Caspi concluded that the last date for the applicant for cancellation to file counter-evidence was 6 April 2016,. The evidence was filed on 7 April 2016 – i.e. a day late. The mark owner only received a copy by registered mail on the 17 April 2016 .

The language of Regulation 40 should be understood as instructions for one party to provide evidence to the other party simultaneously with submitting the evidence to the patent office and not afterwards. However, as a matter of principle, disputes should not be decided based on procedural issues only where there is no irreversible damage to the opposing party. See 189/66 Asiz Sasson vs. Kedma LTD  – Car and Equipment Factory P.D. 20(3) 466, 479. In this instance, the procedural irregularities do not cause irreversible harm to the mark owner since the next stage of the proceedings is to fix a date for a hearing. The tardiness does not justify cancelling the proceedings.

That said, the document titled “Response to Dr Sarid’s Opinion has a signed blank sheet attached that casts aspersions regarding whether the signature belongs with the response, as there is no reason for the last page not to be signed. The document does not include the name of the expert who wrote it and is undated. It is also not endorsed by a lawyer. So whilst cancelling the evidence and closing the case on procedural grounds is a drastic step, this does not mean that anything is acceptable.

Consequently, the applicant for cancellation has 14 days to resubmit the expert opinion as a proper signed and dated affidavit with appropriate lawyer’s warning within 14 days, and to ensure that the trademark owner’s counsel receives a copy in this period as well. Interim costs of 800 Shekels + VAT are awarded to the mark owner, to be paid within 14 days.

 


AIPPI Conference, Constructive Criticism

March 27, 2016

excellent

I very much enjoyed the AIPPI conference last week. It had a good balanced program, with interesting presentations by active and by retired judges from the courts, by two senior Government Ministers (Justice and Health) who each spoke briefly, presentations by the Commissioner and Deputy Commissioner, by local and foreign patent professionals, judges and academics. The event as a whole almost ran to time thanks no doubt to meticulous planning by Dr Ilan Cohn, Tal Band and Dorit Korine who are to be congratulated on putting together a very enjoyable and varied program with generally good speakers covering interesting topics. There were parallel sessions offering something to everyone. Patent Attorneys could have furthered their education by attending patent related topics including valuation, claim construction for medical devices, US practice and the pros and cons of the Unitary Patent. Furthermore, the refreshments were delicious.

For a tongue-in-cheek review see Megillat AIPPI.

Nevertheless, the conference could have been even better. The attendance was poor and many firms were totally unrepresented. Others, who had a speaker or panel moderator, sent that person, who typically did not stay for anything else. I did not see any IP lecturers from any of Israel’s universities or law schools, apart from the one or two who were presenting.

I promised not to criticize anything on this blog prior to the conference. Indeed, I plugged it several times and even noted it was happening in my last newsletter, which has a large circulation. Now that it has been and gone, I am publishing some reflections. I hope that others take heed and consider what I write.

Participants, Cost and Program

cost benefits

There was an impressive 600 participants claimed in advance to sponsors such as myself. At the time the organizers said 350 on first day and 320 on second day. The organizers won’t provide me with a list of registrants, not as a sponsor (unlike what typically happens at other conferences) and not as a blogger. Consequently I can’t varify the numbers. Nevertheless, based on a quick count in the various halls and coffee area, I think that these numbers more modest numbers are inflated as well. Such a turnout is impressive for an Israel IP event, if less so for what was billed as an International IP Event.

That as may be, what was clear was that several firms were not represented at all. Some senior partners of other firms attended, particularly if they were chairing sessions. Very many practitioners did not attend. The local IP lawyers and patent attorneys are a well-defined, easy to reach demographic. If they didn’t turn up then either the publicity was bad or the program was somehow not attractive.

For several years now, I’ve watched many entrepreneurs, some with a high level of knowledge in their field, trying to bring their product to market. those that succeed are not necessarily those who can do everything themselves. A knowledge of personal limitations and involvement of others is a tried and tested strategy. This AIPPI conference required financing, organizing speakers and a balanced program, branding and marketing. I think what let it down was poor branding and marketing.

Under the auspices of the AIPPI this conference should have been seen by IP practitioners and academics as their event. It wasn’t perceived that way so people didn’t come. This is a branding failure. A second problem was the marketing. There is a world of difference in making sure that the key demographic groups know that an event is happening and making them feel that they want to come.

Note, I could simply focus on the program or the refreshments in this blog. The conference itself took that approach by stressing Israel’s Start Up Successes, and ignoring the vast majority of start ups that fail and Israel’s problem in growng and maintaining stable mature companies. So this blog has value, I will relate to other aspects. Maybe someone out there will heed what I say to the benefit of all.

Whova

Hoover

Going through the list in the totally superfluous App I noted that it included about 120 speakers and very large contingents from Reinhold Cohen (39) and Teva (23). This is not a bad thing. These are all practitioners that can learn from the program who are all welcome. The problem is that when one subtracts these from the totals and notes that there is a relatively small number of participants from abroad who are mostly Jewish attorneys who have local clients, work with local firms and are timing one of their regular visits., including many old friends and associates that I am delighted to see and that there were many Israel Examiners who came along for free to make up numbers, it is clear that the event did not attract the employees of very many local firms.

The event was blogged on the IPKAT and on this forum. Publicity was sent out via the various trade organizations. I doubt that much more could be done to attract foreign professionals. Especially in the less than favorable security climate.

bums on seats

Bums on seats…

What concerns me is that there was a low representation of the key demographic, i.e. Israeli patent attorneys, IP lawyers  and academics. I talked to some who didn’t register. There are those who are simply not interested in IP conferences and are too busy working. Others felt the program didn’t match their interests and needs and some felt that the entrance price was too high. One suggested to me that there should be a two tier cost, so that in-house attorneys and IP managers in start ups and those in small firms should pay less. He was willing to forgo the banquet and even bring sandwiches instead of attending the dinners, and the practitioner in question enjoys his food. I don’t know if this approach is realistic. That said, the patent office offers a 60% discount on patent filing fees to small businesses so maybe staggered fees could work.

The committee was heavily stacked with senior partners in large firms and with in-house IP personnel from very large companies. This reflected their choice of speakers which seemed to be senior partners in large firms and in-house IP personnel from very large companies.

It is possible that IP service providers and in-house managers of more modest companies have different needs and interests. If there had been a representation of sole practitioners, recently qualified practitioners – say within three years of qualifying, and indeed, trainees, plus in-house IP managers in businesses that are financially challenged, it is possible that the program and the venue might have been more attractive to the local profession who are the key audience after all.

On the map

In my opinion, the purpose of conferences of this nature should be two-fold.

  1. To showcase Israel and to put it on the IP map, promoting the country in general and its relevance to IP strategy in particular.
  2. To train practitioners, trainees and students. To do so, the first thing is to get them to attend.

Culture and Politics

culture club

The so-called Gala Event featured the following program:

  • Greetings: Dr.Ilan Cohn, AIPPI-Israel, Co-chair of the conference organizing committee
  • Meet leading Israeli Entrepreneurs
  •    Meet leading Israeli women Entrepreneurs:
    • Prof. Ronit Satchi-Fainaro, Sackler School of Medicine, Tel Aviv University
    • Ms. Batsheva Moshe, CEO, Unistream Life Changing Entrepreneurship
  • “QUARTETOUKAN” Arab-Jewish Ensemble
  • Dinner

Now, for a change I am not going to criticize Dr Cohn for greeting. I think that the job of the co-chair is to greet the guests and introduce the speakers.

My issue is with the remainder of the program.  I find relating to women in this way sexist and offensive. So, incidentally, does my wife who has a master’s degree in mechanical engineering and has worked for over 20 years in multinational engineering companies. We respectfully differ on many matters of politics and principle, but on this issue, we concur.

affirmative action

Prof Ronit Satchi Fainaro has a group with 13 active members, 10 of which are women. (of previous workers, one of four has is a male member. Her website shows a group of women researchers with a token man. It does not seem that her choice of staff is based on merit, but rather on affirmative action which is highly sexist. Ms. Batsheva Moshe is indeed the CEO of Unistream. she is not a director and is not the chairperson. Her entrepreneurial activity is not technology related. We can usefully discuss women entrepreneurs fighting for equal rights to conduct services at the Western Wall with ritual accouterments and  this could be quite interesting as well. However, one wonders what it is doing at an IP conference?

Quartertoukan

Quatertoukan – Is this the right cultural statement at this time, for this audience?

More puzzling still is the choice of musical entertainment. We are not merely provided with the name of the band, “QUARTETOUKAN” but are informed that it is an Arab-Jewish Ensemble. In other words, like the underlining of the word women in the speakers, the racial mix of the band was a political statement by the conference organizers.

If we look at the current Knesset and assume that it reflects the population as a whole, I think it is fair to say that none of the parties making up the government would have chosen to have this band playing at one of their events. I suspect that Yisrael Beteinu would not have chosen this band either. In fact, I suspect that Meretz is the only party that would have. (In this regard, I note that the Head of the Labour Party is currently touting the idea of stripping Arabs of their Israeli citizenship half a century after their suburbs were annexed to the state, and building a wall to keep them out).  That as may be, whilst I am all in favour of coexistence and cross-cultural fertilization and personally believe in a one-state solution, annexing the West Bank and giving full democratic rights to Arabs living there, I am aware that this is a minority position.

If we look at the Israeli IP profession, I think it is fair to say that there are at least as high a percentage of Hareidim, religious Zionists and settlers as there are in the population as a whole. What there is a low proportion of is oriental Jews. The number of Arabs is negligible.

TAYLOR-FORCE-FeatureCrop-Screen-Shot-2016-03-09-at-12.38.43-AM-305x172

Taylor Force, May God Avenge His Blood

The choice of music is not one that the profession listens to. The political statement is not one that has wide support in the profession. In the wake of the recent wave of terror attacks with the murder of an American tourist on the beach-front not far from the conference hotel a week ago, and with IP professionals who have lost family members and neighbors to Arab terror, from the Hadassa convoy massacre onwards,  one wonders if this choice is in good taste?

Now only one participant was wearing a hijab. This was an Examiner recruited by the affirmative action policy for government agencies. apart from Dr Sheila Licht, I didn’t notice anyone else that looked Sephardic. (Sure, Yehuda Tseruya is blue blooded Spanish and Portugese, but he’s a British educated Gibraltarian). I don’t think the music selected was aimed at the target audience. It is not what the predominantly Asshkenazic patent profession listens to.

What is an appropriate political statement?

Personally, for a political statement I’d have preferred to see this conference hosted in Jerusalem, our capital city. I assume that an overwelming majoirty of the local practitioners agree that at least Western Jerusalem should stay in Jewish hands. I don’t think doing so would have affected registration levels. When Note, I put my money where my mouth is. My last event was a PCTea party at Cinema City, Jerusalem.

Purim

Purim

In her presentation, Minister of Justice Ayelet Shaked noted that we were not just a start-up nation but also had a long history. Commissioner Kling wished the audience a Happy Purim. He no doubt notes that Israel patent attorneys are mostly Jewish and many are proud of the fact and religiously committed.

hamentaschen.jpg

The hotel served poppy-seed cake at both lunches and there were Danish pastries for breakfast. Two days before Purim, maybe the tradition hamentaschen patisserie might have been appropriate. Would the handful of Indian and Chinese guests have taken offense? I doubt it.

party

If I’d been consulted I would have suggested that the gala dinner be in fancy dress. I think that IP professionals in small firms attended such events to socialize and have  good time. Perhaps this type of approach might have resulted in participants not only registering for the dinner, but also bringing their significant others along.

I have a patent attorney friend who works at TEVA who is a Meretz supporting  self-declared atheist who is intensely critical of the religious establishment. He quite happily posted a photo of himself in fancy dress at a TEVA Purim party. I don’t think that this sort of Jewish cultural content would be considered as coercion. I think that it would be seen as seasonally appropriate, cultural historical content.

megilla.jpg Haman

I would have gone further. If there had been a Megilla reading at the end of one of the days by ten patent attorneys each reading a chapter, and I can think of ten that read the Megilla who didn’t turn up, they no doubt would have, it would have been an occasion for everyone to boo and hiss Haman. These additional ten practitioners would have invited their friends and colleagues and the more people would have registered (although megilla is traditionally read on Purim, the Talmud speaks about reading up to four days earlier on market days when people gather together). Note, I don’t see any reason why local practitioners who present in any shape or form, shouldn’t have to pay attendance fees. Obviously, judges and senior patent office staff are in a different category.

Let’s assume, however, for arguments sake (and I do enjoy a good argument), that out of concern for alienating the potentially large delegation of Iranian patent attorneys, emphasizing Purim is not appropriate. Here’s the thing. Many patent attorneys don’t work on Purim, and fast the day before, leaving the office early, or working from home. The Purim week is effectively a short week. I suspect that many patent attorneys are also parents. Those with kids in the school system spend das and nights before Purim making elaborate costumes and photograph Junior and Princess in all their glory before sending them off to school. Getting to the Tel Aviv beachfront area for 8:30 to 9:30 am is not really compatible with this. Here again, this cosnideration affects the younger professionals more than those who’ve reached the pinnacle, and typically affects the religious sector more as they tend to have larger families. Jonathan Patentkin, Rabbi Alfred Thee and Susan Lifshitz are veteran patent attorneys with very large families that come to mind. My brother Aharon is a trademark practitioner with a mere six kids., the oldest still in elementary school. I think that if one is not intending on capitalizing on Purim to theme a conference and to allow the dignified to let their hair down a little. maybe Purim week is not the best time to have a conference at all?!

boycott.jpg

Many leading practitioners seem to boycott events sponsored by other firms. They would probably explain themselves as being perpetually too busy with work to make an appearance, but in my opinion, the term boycott is appropriate. It is necessary somehow to make the AIPPI into a practitioner organization so that everyone who is a member of the club sees it as appropriate for them to participate in such events. Frankly I think that everyone present, including the judges and other speakers, could have learned from listening in to other sessions. The attitude of not respecting other experts is not confined to practitioners. I don’t think there was a single IP lecturer who was not speaking or chairing a panel that saw fit to attend to listen to what others have to say. I’d go further. I think that those that did chair sessions or speak came along to do that and then went. Very few sat in on other sessions. This arrogance is sadly typical of the profession.

It is not clear what can be done to alleviate the situation. Some may say that one can bring a horse to water but can’t force it to drink. To some extent this is true. Nevertheless, I suspect that the way the event was run, it may have looked like a Reinhold Cohn production to members of other firms, rather than a profession wide conference. If we can find a way to make such events less branded by the main organizers and sponsors and can also make such events more fun, this may significantly impact participation levels.

One way to increase participation is to have as many people as possible doing something and to make them think it is their event put on by their professional organization with their help. This requires limiting the hands on involvement so that no individual is found moderating or talking at more than one event.

In addition, I think that instead of three people doing all the work and having a committee with important people on it to show that the event is endorsed by important people, the committee could usefully have included a range of ages and levels of experiences, and maybe a different sociopolitical-geograhical-religious persuasions. The idea behind this is that then committee members could target individual potential attendees and invite them individually by phone.

With such a clearly defined demographic, one can send everyone registered to practice at the IPO, all trademark and copyright attorneys, IP academics and others individualized invitations rather than simply informing that the event is taking place.

pyramid

Let us suppose that 20 IP practitioners and academics in different firms, universities and industry segments were each approached and asked to host a table at the gala dinner, and in addition to a fancy dress competition, there would be some fun events played between the different tables, could a medium size firm or a university department with an IP course have allowed themselves not to fill a table? If a sole-practitioner or an in-house IP manager had received four or five phone calls from friends, subcontractors and former mentors inviting him to join their tables, would he or she have felt that this is a big event that would be fun and should not be missed? I think people would come with their partners and colleagues and would come earlier and attend lectures. I suspect their spouses and girl/boy friends would come for the dinner.

Instead of a committee of important people, there would, thereby, be a committee that makes practitioners of all ranks feel important. This is a subtle difference that I think it desirable in a trade organization. I am shifting the focus from having an event to show how important the speakers and organizers are, to how important the organizers consider the potential participants and their enjoyment to be. It is a radical shift.

Do Gooders

The final session saw everyone posing with glasses of wine and listening to a discussion on whether IP could make the world a better place. Could it fight diseases? tackle inequality? prevent global warning? As we were leaving, a friend of mine commented that he didn’t understand what that session was all about.

I note that in addition to the festive meal and the reading, Purim is celebrated by gifts of food to friends and charity to the poor. To provide a buffet selection to participants at each lunch, and a choice of breakfast options and coffee break foods, the hotel provided twice as much food as was eaten. If this was properly refrigerated, this could have been harvested by LEKET Israel and distributed to soup kitchens an charities. Without anyone dipping his hand into his pocket, hundreds of people could have had a free lunch.

Israeli patent attorneys include one that is very active in feeding the poor and employing the unemployable on his farm. In the field of education, there is one who has set up an alternative school, largely funded it himself for some years, and is highly involved. I suspect that the Shin Horowitz chair in IP is also a philanthropic gesture. Undoubtedly there are other charitable initiatives and organizations that other members of the profession are involved with. With a little forethought, donations of participation in training courses and seminars, patent searches, patent drawings and other peripheral services could have been solicited and auctioned for a worthy cause. In other words, vague pontificating could have been replaced by action and an example could have been set.


Opposition to IL 178249 Dropped After Claim Amendment, but then Rejected Due to Lack of Novelty

March 8, 2016

solifenacin

Il 178249 to Astellas Pharma Inc is a patent application titled “PHARMACEUTICAL COMPOSITION FOR USE IN SOLID FORMULATION CRYSTALLINE SOLIFENACIN OR SALT THEREOF AND A PROCESS FOR ITS PREPARATION”. On allowance, back in 2012, it was opposed.

Following the Statement of Claims, Astellas requested various claim amendments, some of which were allowed and some were opposed. The Applicant requested a further amendment and the Opposer did not object, so the amended claims published for Opposition purposes.

This amended claims set (version 5) is now subject to a judicial decision under Section 34. Based on her analysis, the Deputy Commissioner, Ms Jacqueline Bracha considers the claimed invention as lacking novelty and inventive step, and therefore provisionally refuses it under Sections 4 and 5 of the Israel Patent Law 1967. The Applicant has 30 days to appeal this decision.

The claimed invention is a pharmaceutical preparation that includes solid formulation crystalline solifenacin or a salt thereof in a concentration of up to 77% as measured by NMR. The relevant date is the filing date of the priority document which is 25 March 2004.

The specification itself states that this preparation was known, as was its crystalline state and its method of manufacture, and its effectiveness in treating urinary diseases.  The amorphous state was present in tablets on sale prior to the priority date, and the Applicant is requested to answer whether this amorphous phase is indeed inherently present and if so,how and why it affects the novelty of the invention as claimed.

The Applicant claims that the percentage amorphous material in the tablet affects the efficacy and moisture during manufacture affects  the amount of amorphous material in the pills. PEG is used as a binder but this is not claimed and so is not part of the claimed preparation.  Apendix IX of the Statement of Opposition shows that exposure of pharmaceuticals to moisture degrades them, and this occurs more in amorphous regions. as stated in reference:

“What we can conclude from this analysis is that medium effects due to residual water in the amorphous state can be significant, but that the direction and extent of this effect will depend on the nature (e.g., polarity, specific solvation) of the transition state for the particular reaction causing degradation.”

Reference 10 states that wet granulation affects the degradation rate.

From the above, it is clear that persons of the art would expect the amount of amorphous active material to affect the rate of degradation, the extent of degradation over time and to reduce degradation  one should protect from moisture. Consequently the claimed invention is obvious.

The Statement of Opposition shows that the pill was on sale before the priority date.

 

The Application is therefore provisionally refused, and the Applicant has 30 days to respond.


Unsupported Claims for Dental Plate Lifter Cost Patentee 149,000 Shekels in Costs

March 8, 2016

plate lifter

IL 199377 is a patent titled “EXPANDABLE DEVICES FOR DISPLACING THE SCHNEIDERIAN MEMBRANE” it was invented by Ben-Zion Carmon back in  2001 and is a patent of Division of an earlier Application.

When Carmon attempted to enforce the patent against Miambi LTD and Dr Ehraim Kfir, the defendants attempted to cancel the patent and successfully managed to limit its scope.

In Israel Law, a party that successfully manages to oppose a patent, have it cancelled or have its scope narrowed, is entitled to costs. In this case, Miambi LTD requested costs of 1,012,418 Shekels from Ben-Zion Carmon since back in December 2014, they managed to get some of the claims cancelled.

I wrote up the original ruling here.

The main claim was:

A device for displacing the Schneiderian membrane from the floor of the maxillary sinus comprising: a rigid conduit for insertion through the maxillary bone towards said Schneiderian membrane, an expandable inflatable container, a connector, a filling tube, a reservoir having a flowable filling material and injecting mechanism, the distal portion of said connector being connected to said conduit, the proximal portion of said connector being connected to said filling tube, said filling tube being connected to said reservoir, said injecting mechanism being configured for the insertion of said filling material from said reservoir through said filling tube inside said container so at least part of said
container being expanded to protrude distally to the distal end of said conduit inside said maxillary sinus to displace said Schneiderian membrane.

The reason why the patent was severely narrowed was that the claimed structure, an expandable inflatable container, a connector, a filling tube, a reservoir having a flowable filling material and injecting mechanism, simply wasn’t supported.

In my write-up at the time, I noted that the practical joke sold as a plate lifter has the same structure, and so this wasn’t novel.

That as may be, PCZL, representing the patentee, alleged that they would appeal the decision and therefore requested that the costs ruling be stayed, and thereby created a chain of letters and responses that generally procrastinated. The Israel Patent Office noted that the authority for staying a decision is in the hands of the Court of Appeals (The District Court) and not in the hands of the Adjudicator of Intellectual Property, Ms Yaara Shoshani Caspi who heard the original case. The Court never ordered a staying of the costs ruling.

Claims and Evidence of Both Parties

Miambi LTD and Dr Ehraim Kfir alleged that the cancellation proceedings and the associated costs were caused by the legal action brought by Ben-Zion Carmon to enforce the patent against them. They alleged that the action was baseless and was filed in bad faith by Ben-Zion Carmon and caused them to invest substantial resources in defending themselves. Dr Kfir appended an Affidavit relating to consultation fees from Gilat Baraket & Co. as evidence of costs accrued. They alleged that the case dragged on before the Patent Office due to the complicated technology involved. The costs comprised three elements:

  1. 412,000 Shekels for work by the Attorney of Record, Adv. Rahmani, but no documentation was provided to support this cost
  2. 350,418 Shekels in consultation fees to Gilat Baraket & Co. , with various invoices to support this claim
  3. 250,000 Shekels for 250 hours work by Dr Kfir himself in fighting this law-suit.

Pearl Cohen Zedek Latzer raised some creative defenses on behalf of their client:

  1. Ben-Zion Carmon is a private individual and to award costs against him would be a rare precedent. Indeed, he shouldn’t have to pay costs at all
  2. There was no scientific complexity here and the cancellation proceedings was an off-shoot of the Infringement Proceeding in the District Court
  3. The costs request was laconic. No evidence was filed to support Adv. Rachmani’s time or Dr Kfir’s, and the statements from Gilat Bareket & Co, were not sufficiently detailed
  4. The costs requested were unreasonable and disproportionate
  5. Gilat Bareket & Co are not consultants, but representatives and it is unreasonable to charge Carmon twice for two sets of lawyers fees
  6. Ms Pugatsch’s costs of 80,000 Shekels for preparing an Affidavit was ridiculous, since Carmon’s witness, Prof. Ciaco only charged 5920 Shekels.
  7. Citing previous rulings, the costs for Dr Kfir’s time were unreasonable since his work as CEO of the company requires him to work on such matters
  8. Since Adv. Rachmani is a minor share-holder in Miambi LTD and provides legal aid on an ongoing basis, he can be considered an employee who is performing his regular work and thus his costs are not refundable

Discussion and Ruling

The guidelines for cost rulings are set out in Bagatz 891/05 (Tnuva) which discusses the work done, legal and factual complexity, stage that proceedings reached, bahaviour of the parties, equitable and inequitable behaviour and the like.

Where actual costs are requested, the onus is on the plaintiff to prove that these costs were indeed incurred and were necessary. As ruled in Opposition 113433 Smithklin beecham Corporation (SKB) vs. Teva (30 May 2005) not all costs are recoverable.

Turning now to the three cost elements:

  1. Rachmani’s costs of 412000 Shekels were for a detailed list of actions but the time involved and hourly rate were not detailed. Certainly some of the time spent and costs requested, such as those for initiating intermediate proceedings that were unsuccessful. Although a minor share-holder he is not a worker. It is acceptable since he provides on-going legal services that he will be paid from costs award and not per action and so lack of invoices is not critical problem. In general, a fair recompense for his work can be assessed by approximation
  2. It is not clear what Dr Kfir did in his 250 hours, after all Adv. Rachmani was inside counsel of the firm. Furthermore, Dr Kfir is, himself, a named party. He does not, therefore deserve costs.
  3. The costs for Gilat Bareket’s work were not detailed. There is no clear correlation between the list of actions detailed in Dr Kfir’s affidavit and the Gilat Bareket’s Some invoices precede their submission to be co-counsel.  Adv. Rima Pugatsch’s opinion was blled for in two invoices. The breakdown between these is not clear and the basis for the cost was not detailed. This makes it impossible for the Patent Office to assess whether the costs were fair. Thus a fair price for Gilat Bareket’s work can only be assessed by estimation.
  4. PCZL’s allegation of double representation is rejected, since the case is factually and legally compex.

Ruling

More or less by weight, Costs were approximated as follows:

  • 90,000 Shekels for Adv. Rachmani’s time
  • 45000 Shekels for Gilat Bareket’s consultancy
  • 8000 Shekels for the Opinion by Ms Rima Pugatsch
  • 3000 Shekels for requesting costs
  • 3000 Shekels for having to file additional papers after the main ruling.

Total costs of 149,000 Shekels should be paid within 10 days.

COMMENT

The claimed invention was not supported by the specification and the divisional patent should not have issued. I still maintain that structurally the claim relates to a plate lifter and thus lacks novelty.

Pearl Cohen should have told Dr. Carmon not to attempt to enforce the patent against Mumbai. However, as with the Origin Source case and the Air-Conditioning unit support brackets Pearl Cohen have a history of attempting to enforce patents where there is no infringement and the patents should not have issued. The delaying tactics they’ve employed here are also typical of their modus operandi.


Insufficient Evidence to Find Finnegan Guilty of Conflict of Interest

December 27, 2015

michaelfinnegan  Finnegan’s Wake here.

The Supreme Judicial Court of the State of Massachusetts has upheld a decision to dismiss claims against Finnegan, Henderson, Farabow, Garrett & Dunner, LLP (henceforth Finnegan) for conflict of interest. A copy of the opinion may be found here.

The Facts

Chris Maling hired patent prosecuting attorneys at Finnegan Henderson to prosecute a set of patent applications relating to screwless eyeglass hinges. According to Maling’s complaint, Finnegan was representing his competitor in the screwless eyeglass market, filing patent applications for that competitor.

Maling claimed that:

  1. He would not have hired Finnegan if he had known that the firm was representing the competitor in the same “patent space.”
  2. He was harmed when he asked the law firm to provide him with a legal opinion addressing similarities between Maling’s patents and the competitor’s patents, and the firm declined to do so. Without the opinion, Maling said, he was unable to obtain funding for his invention, and his product was unmarketable due to similarities with the competitor’s device.
  3. Maling alleged that 14 month delays in drafting patents for his invention were caused by Finnegan favoring the other client.

Maling engaged the Boston Office of Finnegan’s services in 2003 and, after various prior art searches, Finnegan filed and obtained four patents for Maling. The relationship terminated in May 2009. Over this same time period, attorneys in the Washington DC office represented Msunaga Optical Manufacturing Co. LTD. (henceforth Masunaga), a Japanese company also seeking patents for screwless eyeglasses. Maling considers it unacceptable and inexplicable that it took 14 months, until May 2004 for Finnegan to start drafting his applications, whereas Masunga’s were filed more quickly. He claimed to pay in excess of $100,000 to Finnegan for their services, and would not have done so had he been aware of the (alleged) conflict.

Maling requested relief based on:

  1. Breach of Fiduciary Duty
  2. Legal malpractice
  3. Unfair or deceptive practices
  4. inequitable conduct

Maling’s complaint alleged several claims for relief, including legal malpractice, all hinging on the existence of an alleged undisclosed conflict of interest arising from Finnegan’s representation of both Maling and his competitor.

The complaint was dismissed by the court of first instance and their decision was upheld on appeal on two grounds:

  1. The simultaneous representation by a law firm in the prosecution of patents for two clients competing in the same technology area for similar inventions is not a per se violation of Mass. R. Prof. Conduct 1.7.
  2. Based on the facts alleged in his complaint, Maling failed to state a claim for relief.

The case is Maling v. Finnegan, Henderson, Farabow, Garrett & Dunner, LLP, SJC-11800, in the Massachusetts Supreme Judicial Court.

The Ruling

The relevant law is Rule 1.7 of the Massachusetts Rules of Professional Conduct. This law provides that a lawyer shall not represent a client if the representation is “directly adverse to another client,” Mass. R. Prof. C. 1.7 (a) (1), or where “there is a significant risk that the representation of one or more clients will be materially limited by the lawyer’s responsibilities to another client, a former client or a third person or by a personal interest of the lawyer.” Mass. R. Prof. C. 1.7 (a).

At the time this action was brought, concurrent conflicts of interest were governed by 37 C.F.R. § 10.66 (2012) (entitled, “Refusing to accept or continue employment if the interests of another client may impair the independent professional judgment of the practitioner”), which provided:

“(a) A practitioner shall decline proffered employment if the exercise of the practitioner’s independent professional judgment in behalf of a client will be or is likely to be adversely affected by the acceptance of the proffered employment, or if it would be likely to involve the practitioner in representing differing interests, except to the extent permitted under paragraph (c) of this section.

(b) A practitioner shall not continue multiple employment if the exercise of the practitioner’s independent professional judgment in behalf of a client will be or is likely to be adversely affected by the practitioner’s representation of another client, or if it would be likely to involve the practitioner in representing differing interests, except to the extent permitted under paragraph (c) of this section.

(c) In the situations covered by paragraphs (a) and (b) of this section a practitioner may represent multiple clients if it is obvious that the practitioner can adequately represent the interest of each and if each consents to the representation after full disclosure of the possible effect of such representation on the exercise of the practitioner’s independent professional judgment on behalf of each.

(d) If a practitioner is required to decline employment or to withdraw from employment under a Disciplinary Rule, no partner, or associate, or any other practitioner affiliated with the practitioner or the practitioner’s firm, may accept or continue such employment unless otherwise ordered by the Director or Commissioner.”

The court ruled that “subject matter conflicts” do not fit neatly into the traditional conflict analysis. They opined that Maling’s interpretation of rule 1.7 would render all subject matter conflicts actionable per se. The court disagrees with this position. It considers that subject matter conflicts may present a number of potential legal, ethical and practical problems doe lawyers and their clients, but do not themselves consititute actionable conflicts of interest under rule 1.7.

What is forbidden is to represent a client in an adversarial matter against another entity that is a client, even if not in the same case unless one has the consent of both sides. In this instance, the two companies were each represented by Finnegan at the USPTO in patent prosecution, There was no inter partes proceeding. The fact that the two clients were economic rivals is insufficient to create an actionable conflict. Of note, there was no interference proceeding between applications of the two clients. Since both clients’ patents issued, there is no overlap in inventions.  Furthermore, there is no indication that an interference was likely.

The court further recognized that Finnegan opined regarding the Masunga patents, that would have been actionable, but Finnegan declined to do so. (the reason why they declined is not given).

Although in Sentinel Prods. Corp. vs. Platt, U.S. Dist. Ct., No. 98-11143-GAO (D. Mass. July 22, 2002) (Sentinel), the concept of ‘claim shaving’ is discussed, in this instance, Maling provided no evidence that the scope of his protection was limited by Finnegan out of deference to Masunga. This is mere speculation.

Finnegan’s refusal to opine regarding Masunga’s patents is suspicious, but whether or not Finnegan should have declined to take on Maling as a client in 2003 depends on the potential for conflict appreciated back then.

The court noted that Comment 8 to rule 1.7 elaborates:

“The mere possibility of subsequent harm does not itself require disclosure and consent. The critical questions are the likelihood that a difference in interests will eventuate and, if it does, whether it will materially interfere with the lawyer’s independent professional judgment in considering alternatives or foreclose courses of action that reasonably should be pursued on behalf of the client.”

In the oral argument, Maling’s counsel alleged malpractice or negligence in Finnegan’s failure to discover and disclose Masunga’s patents during their prior art search. As this allegation was not in Maling’s complaint, the court ignores the issue. In an interesting twist, Maling accused Finnegan of failing to disclose information to the USPTO (regarding the other client’s patents) and that this was inequitable conduct. The court noted a dearth of case law on the matter. The main issue seems to be that the attorneys working for the two clients were working from different offices.

In conclusion, although there are various factual scenarios under which client matter conflict may give rise to an actionable violation under Rule 1.7, the facts alleged to not amount to an actionable conflict. The dismissal of the complaint is reaffirmed.

COMMENTS
As noted by the Honorable J Cordy the issue at stake is whether there was an actionable conflict of interest (under Mass. R. Prof. C. 1.7, as appearing in 471 Mass. 1335 (2015)) when attorneys in different offices of the same law firm simultaneously represent business competitors in prosecuting patents for similar inventions without informing them or obtaining their consent to simultaneous representation.

The issue of Conflict of Interest is sometimes termed an ethical one. It is noted that there is a difference between legal ethics and ethics as generally understood. Once ethics are codified, they become regulations or laws. Ethics is appropriate behavior over and above that required by the law.

Various amicus briefs were filed. These include one by the Boston Patent Law Association and various ones by IP Law Firms including Knobbe, Martens, Olson & Bear, LLP; Honigman Miller Schwartz and Cohn LLP; Nixon & Vanderhye P.C.; Lewis Roca Rothgerber LLP; Schiff Hardin LLP; Steptoe & Johnson LLP; Snell & Wilmer LLP; Barnes & Thornburg LLP; Pillsbury Winthrop Shaw Pittman LLP; Verrill Dana LLP; and Morrison & Foerster LLP.

In large firms it is not unlikely that one attorney may be unaware of the clients of another. The client concerned about specific competitors can and should present a list of such competitors to his attorney to provide a clearance check.

Israeli standards of conflict of interest are different from those of the State of Massachusetts. An Israeli firm engaging Finnegan or another large US firm would probably have to bring complaints of alleged conflicts in US courts, which is not cheap and is not easy. There are, therefore, advantages in engaging local representation in Israel who are bound by local standards and can be sued locally.

It is more than likely that the two attorneys at Finnegan handling the spectacle hinge cases were unaware of the other client until the opinion issue arose. At that stage, it is clear from the front cover of the patent/application, who the attorney of record is.

One of the reasons suggested for employing a big IP firm is the fact that an attorney with relevant experience can handle specific cases. I don’t know to what extent practitioners pass work over to colleagues with specific experience. I expect it is rare, apart from partners who are essentially rain-makers rather than practitioners.

In general, it is much easier for small firms to avoid subject matter conflicts. Over the years, I have had client referrals from sole practitioners and smaller firms who had subject matter conflicts. I also have had referrals from colleagues that felt unhappy with their understanding of the subject matter. In some cases, this has been specific applications where the client has remained with the referrer and I have handled only the specific technology. In other cases, clients are referred. There are some attorneys who are specialists and only handle, say, telecommunication patents, or only handle pharmaceuticals. Other attorneys are generalists and are comfortable drafting and prosecuting a range of technologies. It is important that the attorney drafting the case understands the technology. Ideally the drafting attorney should have direct contact with the inventors.

Care should be taken to avoid working with attorneys that outsource work to unidentified sub-contractors, whether local or abroad. I don’t think that a 14 month drafting delay would happen in a small firm. suspect that in general smaller firms provide a better service and are more cost-effective than larger firms. However, at the end of the day, it is the attorney that handles the case and his/her experience that matters, not the size of the firm. It is where a file is touched by many hands, with trainees, junior associates and senior partners, paralegals and filing clerks all billing their time that prosecution gets delayed and costs escalate.

Maling’s allegation that Finnegan’s failure to disclose information to the USPTO regarding the other client’s patents was inequitable conduct was a dangerous argument. It undermines the validity of their own patents.


Beer Brands Not Protectable in Gaza

November 26, 2015

The Trademark Office in Gaza issued Ministerial Decision No. 16 of 2010 on 1 August 2010 stating that is not possible to file new trademark applications in class 32 covering beers and lager any longer, nor it is possible to renew registered trademarks covering the same items.  The Gazan Trademark Office has restated this Decision.

In Taybe, a Christian Arab village just East of Ofra there is a micro-brewery called Taybe Beer that is owned by the Khoury family.  There was a time when Rav Avi Gisser, the Rabbi of Ofra gave Rabbinic supervision to the beer, but this is no longer the case.

Should a fundamentalist Muslim country prevent registration of trademarks for alcohol or should it have sympathy for its minorities? We recently filed a trademark for bacon products for a Russian client. Neither Jews or Muslims eat bacon, and many Jews who are not strict observers of laws relating to Kosher food nevertheless refrain from eating bacon. There are, however, Russian immigrants who are not Jewish. There are also Russian Jews living in Israel who grew up in Russia and like bacon. I don’t think that trademark offices should use public order clauses to enforce religious dietary laws.


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