Getting a Handle on Israel Design Registration

March 26, 2017

Furnipart

Although there is a proposed Law in the works, in Israel, design registration follows the somewhat archaic Patent and Design Ordinance 1924 inherited from the British Mandate. Formally, only local novelty is required! In a Circular, Previous Commissioner Dr Meir Noam creatively interpreted the Law such that Internet publication in official Patent Office websites that are acceptable in Israel would be considered as published in Israel. As discussed in this blog, that Circular is arguably ultra-vires in that such a determination arguably requires at least Ministry of Justice regulations if not a change in the Law. The present ruling by Outgoing Commissioner Kling relates to this Circular.

This ruling concerns seven design registrations – 55598 to 55604 – all of which were titled ‘Handle’ and were filed on 20 May 2014 in class 08-06 for handles and hinges by Furnipart.

On 22 March 2015, the Applicant received an Office Action that alleged that the design were lacking in the novelty and originality required by Section 30(1) of the Patent and Design Ordinance 1924 since the designs were identical to those registered in the name of the Applicant in Europe which were registered and published prior to submission of the Applications in Israel.

In addition to the 55602 registration that was submitted to the EPO on 18 October 2013 and which published on 15 November 2014, all the applications were submitted on 21 February 2014 and published on 26 March 2014.

The Applicant failed to respond to the Office Actions in the period specified in Regulation 28 of the Design Regulations, and on 23 June 2015, a reminder was sent warning the Applicant that failure to respond within 30 days with a request for a retroactive extension would lead to the applications being considered abandoned.

On 10 August 2015, the Applicant sent a response in which he claimed that the designs were, indeed registered in Europe, but apart from the publication on the EPO website, there was no publication in Israel. The Applicant claimed that the Israel Application was filed within the six month time frame of the European filings which is within the grace period from the first filing (Denmark) given in Section 52a(1) of the Ordinance.  Consequently, the European filing date should be considered the effective filing date in Israel.

On 13 August 2005, the Applicant was sent a notice that stated that further examination required payment of the extension fee, and which referenced Circular M.N. 69 from 25 December 2008 and to Section 53(2) of the Ordinance, noting that the Applications did not, claim priority.

On 9 September 2015, the Applicant was sent a second Office Action clarifying that under Circular M.N. 69, an Internet publication is considered as a publication that is published in Israel and so the Applications are contrary to Section 30(1) of the Ordinance. Similarly, it was noted that priority was not requested within two months of submission as required by Section 52(2) and so the effective filing date was the actual filing date in Israel.

On 15 December 2015 in light of the rejection of 9 September, the Applicant requested a hearing and this was geld on 18 April 2016.

Prior to the hearing, the Applicant submitted his main pleadings on 11 April 2016., during which he reiterated the above claims. He also alleged that Circular M.N. 69 differentiates between official and commercial publications and the European Patent Office publication was not meant to be published in Israel, even if it is accessible on line from Israel since the Israel design is not in force. Based on this ‘logic’, the Applicant claims that he is within the requirements of Section 52(a)1 of the Ordinance since there is a six month’s grace period.

 The Ruling

Section 30(1) of the Ordinance states:

The registrar may, on the application made in the prescribed form and manner of any person claiming to be the proprietor of any new or original design not previously published in Israel register the design under this Part.

So registration is contingent on no prior publication in Israel.

In Section 6 of Circular M.N. 69 from 24 December 2008, the previous Commissioner ruled that :

One can cite designs that have published on the Internet before the filing date in Israel, since there is evidence of their publication date.

To cite something against novelty of a design, section 7 of M.N. 69 relates explicitly to publications in patent offices abroad.

Use of Internet publications shall be done with the required care and only where the Examiner considers that he can rely on it indeed having published prior to the Israel filing date. For example, publication in databases in the official European patent office website OHIM, the USPTO and WIPO, etc. which publish the publication date of each design.

As far as relying on Internet publication, Examiners have been warned to cite these with due care – see the 51593 and 51594 Tequila Cuervo ruling from 9 June 2013, particularly paragraphs 44 and 45, and the ruling concerning various designs to Naot Shoes (1994) ltd published on 1 June 2016 

The same required care regarding the publication date, content and likelihood of Israel based surfers seeing the publication was considered in paragraph 10 of the 45452 Sejec Vanja ruling published on 28 February 2012: 

The language of Section 30(1) of the Ordinance states ‘… not having published earlier in Israel. This does not require that anyone has actually seen the publication…such was always the interpretation, even prior to the Internet age. The question is whether the publication was accessible. See for example the Appeal 430/67 Sharnoa ltd. et al. vs. Tnuva et al. (1968):

“The law regarding prior publication in a book of this type is based on the book being found in a place accessible to the public, such as a public library is considered sufficient publication, since one can assume that in this manner, the design reaches the public knowledge”.

In light of the above, one cannot accept the Applicant’s allegation that the previous publications are not novelty destroying, since reason that Patent Office Internet accessible databases are considered publications is the ease with which one can verify the publication date. This is certainly the case where the applicant does not deny the trustworthiness of the site and of the listed publication date, only whether Israelis would have access to inspect there.

Priority Date

The Applicant claims that despite the earlier publications that are novelty destroying for the applied for designs, the effective filing date in Israel should be considered as being the actual filing date in Europe.

Section 52(a) states:

If a design owner submits a request to register a design that has previously been filed by himself or by  his predecessors in title, a request to file in one or more friendly states (henceforth priority), he may request that as far as sections 30(a) and 36 are concerned, that the earliest priority date will be considered the filing date in Israel if all the following conditions are met:
(1) The Israel Application is submitted within six months of the earliest priority; and
(2) A priority request is submitted within two months of filing.

Firstly, it is stressed that contrary to the Applicant’s claims, Section 52 that the priority date is determined with reference to Sections 30(1) and 36, i.e. with respect to novelty and earlier publication. This does not mean that where a priority claim is made, that the Israel application automatically is awarded the priority date.

In this instance, the previous applications were filed on 21 February 2014 and then in Israel on 20 May 2014, i.e. within the six months grace period for which I priority request can be made. However, filing within six months of the prior application is insufficient since the second clause requires that the Applicant makes a priority claim within two months of the Israel filing date.

On 21 October 2014, this two month period for requesting priority in Israel passed, the period for which the application can rely on the filing date of earlier applications with respect to Sections 30(1) and 36 passed without Applicant requesting priority.

The Commissioner does not agree with the Applicant that the mere filing of an Application in the period provided for in clause 1 is sufficient since Section 52 requires both conditions to be fulfilled: filing within six months and making a timely request for recognition of the priority date. These conditions are complimentary – section 52(a) states explicitly that it applies if all the following conditions are met. One condition being fulfilled does not waive the other. So there is consensus that merely filing within six months does not result in priority being recognized.

Since the full requirements were only met a year after the two month deadline, the Applicant is not entitled to the priority date.

In the hearing, the Applicant’s representative noted that section 54 gives the Commissioner the discretionary powers to extend deadlines in the regulations even retroactively. The Commissioner considers that this regulation does not give him the power to extend deadlines in the Ordinance itself, including extending the priority claim.

The Application is rejected and the designs will not register.

Ruling concerning Design Numbers 55598 to 55604 “Handles” by Asa Kling, 21 February 2017.

COMMENT

four candles  The classic 1976 Fork Handles sketch may be found here.


Online Design Filing in Israel

December 22, 2016

ilpo

The Israel Patent Office held a seminar today to introduce their new online design submission interface. Over the past five years the Israel Patent Office has gradually introduced online trademark, PCT and patent filing and prosecution and has published guidelines for examiners, which help applicants and their representatives.

The Design Department is the last department to become fully computerized, and, if all goes well, the interface will become ‘live’ on 29 December 2016.

alferd_teeThere were some 50 participants at the seminar. These included veteran Patent Attorney and Rabbi, Alfred Thee, known generally as Mr T, who, though rather less muscular and black than the character from the A Team, is, nevertheless, a very sprightly and highly experienced 85 year-old practitioner that I had the benefit of training and qualifying under. Mr T told me that he was finally leaving his long-term employment at Seligsohn & Gabrieli at the end of the year, but would carry on working as a self-employed consultant. I anticipate retiring before he does!

In addition to various friends, colleagues and competitors, I noted the presence of Zvi Teff who qualified under my tutelage, and who has recently opened his own firm. We wish him luck with this endeavour.

aippiThe seminar ran from 11:00 AM to 1:00 PM. Those that could be bothered rushed over to Tel Aviv for a General Meeting of the AIPPI that started at 2:30 PM. Holding the two events on the same day seemed to be both rather silly and also discriminatory against those practitioners that file design applications.  Had the AIPPI held their event at the Israel Patent Office at 2:30, many more people would have attended both events. There are only a few hundred IP practitioners in Israel, including lawyers, examiners and patent attorneys, that could join the Israel Branch of the AIPPI. Doing a General Meeting on the same day as an IP seminar at the Patent Office is like holding a general meeting during INTA. It is plain stupid.

Commissioner Kling opened the event and spoke about the pending Israel Design Law which is due to replace the hopelessly outdated Design Ordinance from 1922 that is currently in force. Amongst other ramifications of the pending legislation, it will pave the way for Israel to join the Hague International trademark registration system.

After the Commissioner finished, the Head of the Design Department, Alice Mahlis-Abramovich took the podium. However, the actual instruction on the new interface was given by someone from a software instruction agency who bore a slight resemblance to Israeli singer Roni Dalumi. Having someone who was used to explaining how to use software explaining how to use the software was a strategy with mixed results. Since she didn’t practice design law, she could relate to what the software did, but not how to do various things that practitioners might want it to do. Also, she referred to something submitted as being a design, whereas practitioners would call these design applications, and only refer to the examined and registered product as a ‘design.’

Those now familiar with filing and prosecuting patent applications via the online interface will experience little difficulty using design interface. The seminar wasn’t very exciting, but some of the questions were rather interesting. Apparently one of my colleagues submits patent applications, listing a-company-in-the-process-of-being-set-up as the applicant to avoid a tax incident occurring. That as may be, a not yet formed company is not a real person or a legal person (entity). If the company is not formed or if the name changes, who can assign rights to the application? How can one obtain a date without an applicant that actually exists?


Updated Blender Container May Be Registered as a Design

December 11, 2016

On 26 August 2014, HOMELAND HOUSEWARES, LLC submitted a design application to the Israel Patent Office for a blender container as shown below.

blender

Although the Design Ordinance 1924 only requires local novelty, previous Commissioner Dr Meir Noam interpreted this to include prior art on the internet that is accessible in Israel. In an Office Action of 1 July 2015, the Examiner found a picture of a blender on the Applicant’s website that appeared to preempt the registration and therefore refused the design. The Applicant responded on 23 August 2015 to the effect that the blender on the website was an earlier model. Although both had four vertical ribs, in the earlier model blender as shown on the website, these ribs were protrusions on the inside of the container, that served as baffles, preventing the contents from swirling around and aiding blending, whereas in the applied for design the vertical ribs were on the inside and outside. Noting that to remove the container required inverting it and therefore arguing that uses would grip the top (the base when inverted) and not the protruding ribs, these ribs were aesthetic, non-functional elements, and by virtue thereof, the design was registerable.

The Applicant submitted an affidavit that stated:

7. The presence of external ribs changes the overall appearance and impression of the vessel significantly. The cross-section of the ribs is triangular in shape and the vertex of the external ribs is pointing outside. As such, users can see four external ribs that are very sharp. In contrast, users can only see the base of the triangular ribs in the prior art because the internal ribs are pointing inward. …

8. The presence of the external ribs also creates lighting effects that improve the appearance of the vessel. The vessel is made of plastic so that it is partially reflective and partially translucent. …”

“9. The presence of external ribs is mainly for aesthetic reasons. While internal ribs promote communication and disintegration of food contents, the external ribs do not interact with the food content and do not have any effect on the blending and mixing quality of the blender. The external ribs do not significantly help users to open or close the vessel with the blade base. … when users want to open the vessel and remove the blade base, they have to invert the vessel otherwise the food contents will spill. Hence, users will apply force to the blade base to rotate the blade base off of the vessel.”

“10. … The field of mixing vessels is regarded as very crowded. Vessels that have internal ribs are very common. …
11. However, I am not aware of any prior art blender vessel that has ribs on the external surface. Since the field of mixing vessels is crowded, it is my opinion that having external ribs on the surface is a very significant alternation of the appearance of mixing vessels. …”

The Commissioner Asa Kling, reiterated that any original or new design could be registered in Israel, and the term design is includes outlines, shapes or decorations of industrial objects of manufacture that are readily visible to consumers who need not be experts but are not simply passers-by (sections 1 and 2 of the ordinance, and 1187/94 Sela vs Ackerstein LTD [8] 291. 

With reference to the 22424, 22433, 22783 and 23767 Klil ruling from 1997, in crowded fields, one does not analyze an object into its elements, but considers it as a whole, see also 31007 Thermo-gumi vs Agmon Plastics and Rubber Industry, 4 April 2011.

With regards to designs on the Internet accessible from Israel, these are prior art under the ordinance as interpreted, see Design 51593 and 51594 Tequila Cuervo S.A. DE. and the Teva Naot case, and further ruled that previous decisions that required care when considering Internet publications not in patent office databases, required care regarding the date of posting, but were prior art in all regards. He accepted the Applicant’s contention that the external ribs were an aesthetic and non-functional modification, and allowed the application, returning it to the design department for registration.

 


Israel Patent Office Denies Authority to Reinstate a Lapsed Design After Grace Period, Despite Proof of Timely Payment

March 9, 2016

Pigeon post

Gabi Bakshi has two registered designs that have lapsed. Design Number IL 40188 is for a dove shaped sculpture. It was registered in January 2005 and renewed in November 2009. It then lapsed because the second renewal wasn’t timely paid. The six month grace period ended on 17 July 2015. Gabi Bakshi also registered Israel Design No. 48297 which is for a variant of 40188. This variant was filed in September 2009 and registered in November 2009. It should have been renewed on 17 January 2010 together with the 40188 design since, as a variant design it was not entitled to longer protection than the parent.

On 28 December 2015, Mr Bakshi requested reinstatement of both designs. He claimed to have paid the renewals on 16 November 2014 and to have posted the renewal receipts for the second renewal to the Israel Patent and Trademark Office by registered mail but it was never received and so the design lapsed.  The appended receipt shows that  the 40188 design was renewed but there is no evidence that the 48297 variant was renewed. At a hearing, Mr Bakshi renounced the 48297 variant but alleged that he believed that the 40188 design was renewed in a timely manner.

Ruling

Section 33(4) of the Design Ordinance requires requesting an extension within five years and the regulations grant a six month grace period. Citing 30704 and 3705 Moshe Harel and 560/92 Klil Industries, the Deputy Commissioner, Ms Jacqueline Bracha considers that unlike lapsed patents, the Commissioner does not have the authority to reinstate a lapsed design after the six months grace period has passed.  In this instance, the fact that the Design registrant had paid the renewal fee and sent it to the patent office does not help as it was not received.

Based on the decision concerning design numbers 35866 and 35867 to Eli Yashar, where a request for extensions is made, the Commissioner can extend the period of a design if two conditions are fulfilled. One has to both timely request an extension and to pay the fee.  Without requesting an extension, paying the fee is not enough.

Consequently the request for renewal was not granted. Mr Bakshi may appeal the decision to the District Court which can, if it sees fit, order the extension to be entered into the register.

COMMENT

I suspect that Mr Bakshi may be entitled to copyright protection and to protection under the Law of Unjust Enrichment as per the A.Sh.I.R. decision, but haven’t seen the designs.

I wonder if Pigeon Post might have been more reliable than registered mail?


Can the Commissioner of Patents Suspend Implementation of a Court Ruling Voiding a Design that is Subject to Appeal?

February 8, 2016

Design Registration

On 29 December 2014, in Civil Dispute No. 21740-03-11, the Haifa District Court ruled that design registration Number 53151 to S.H.L. Alubin be struck from the design register.
The design relates to a profile. S.H.L. Alubin have requested that this order be suspended pending appeal. Silver Hong-Kong Israel LTD and Extel LTD oppose the suspension.

S.H.L. Alubin argues that the ruling by the Haifa district court is not final in that he can appeal against it and intends to do so. Since the ruling could be overturned, it makes more sense to stay the ruling than to cancel the design and possibly reinstate.

Silver Hong-Kong Israel LTD who requested the cancellation on the basis of the court ruling, considers that there is no basis to stay the decision as there is a court ruling from 31 December 2015 that the design is void, and the Commissioner cannot maintain a voided mark pending any future development. The jurisdiction appropriate for suspending a cancellation ruling pending appeal is the District Court that issued the ruling. The request to suspend the decision was further defective as it neither detailed the expected damages from carrying out the ruling nor included a personal obligation from S.H.L. Alubin.

Extel LTD who won the case in the District Court concurs with Silver Hong-Kong Israel LTD that the forum responsible for granting a suspension is the Haifa District Court, and the Commissioner does not have the jurisdictional authority to relate to the request.

RULING
There is nothing in the Design Ordinance or the 1925 regulations that relates to suspending a cancellation of a design pending appeal. However, with the nature of rulings before the Commissioner it is doubtful that suspending such a ruling is beyond his Authority. In the cancellation proceedings regarding IL 157925 Moshe Lavie et al. vs Tzach Maoz Mazganim LTD (21 June 2015) and in numerous trademark rulings, the cancellation of the patent / trademark was suspended pending appeal, including after such an appeal was filed or notice of filing of the appeal was received. The Commissioner cannot see justification for design cancellations to be any different. Consequently, the Commissioner can simply draw a comparison form similar patent and trademark rulings.

As a general rule, however, Section 466 of the Rules for Civil Procedure, filing an appeal does not stop a decision being carried out. Section 467 gives the court authority to suspend a decision subject to appeal or to effect any other temporary arrangement as it seems fit. However both sections are applicable to the court that issues the ruling – See Zusman on civil procedure, page 862.

In this instance, the Haifa Court vacated the mark and the Commissioner as head of the Design Department of the Israel Patent Office is being asked to suspend this decision. It is not clear that the Commissioner has authority in such instances, and even if he had, Section 466 would imply that he should not stop such as action.

Suspension of a ruling is justified where the applicant has a reasonable likelihood of prevailing in an appeal and that the damage caused by suspending is estimated to be less than that of implementing the decision and then having to restore the design following successful appeal. See the Supreme Court Ruling 3158/91 concerning Flatto Sharon.
Thus it is for the Commissioner to decide if and to what extent reversing an action will be problematic.

Although he has claimed that implementation won’t harm third parties and that not suspending will cause problems, Alubin has failed to make a reasonable case that implementation of the ruling should be suspended. Section 466 states that the general state of affairs is that rulings should be implemented and the onus is on the design owner to provide convincing arguments to justify acting differently.

Alubin’s argument that if the appeal is successful he would have to refile his design is not the case. The Commissioner can simply restore the design registration as being in force.  Damage may be compensated for by court ordered costs. Irreversible damage needs to be shown not merely claimed.

In conclusion, request for suspending the cancellation is refused and the cancellation of design number 53151 will publish in the next design journal.

Ruling by Asa Kling, Concerning Cancellation of Design 53151, 27 January 2016.


Registering Designs for Garments

February 9, 2015
Fashion is an industry where the innovator benefits from a lead time as first mover, but most manufacturers follow trends and though designs may be registered, usually they are not. Copyright may protect exact copying, but generally this is also not an appropriate tool.
Recently, the international fashion brand Diesel, represented by Adv. Daniel Freimann, managed to obtain an injunction against Israeli clothing retailers Hoodies for copying a design of jeans.
Diesel's jeans are shown here:

 diesel from front  diesel from back

Hoodies jeans are shown here:

hoodies from front   hoodies from back

Diesel’s design has a high waist, are form hugging and have stitching extending from the bottom of the pockets, at the knees and at the back of the legs.  

This stitching detail is somewhat unique. Hoodies claimed that their jeans were not a copy, and were considerable cheaper and noted that the decorative stitching on the back pocket was somewhat different. They also argued that the Diesel’s design was for blue and white jeans only. The judge accepted that the back pocket stitiching was different, however, since Hoodies’ jeans had the same basic shape and included such stitching. 

Diesel had filed design applications (nos. 50526 and 51929 and claimed 11 and 9 novel features respectively. Hoodies argued that their jeans did not have all the elements. The judge considered that the issue is one of the impression of the garment as a whole and not one of analyzing novel features against a checklist. 

Hoodies accepted that Diesel had a reputation, but not one for the specific design. Since their jeans were sold at about 15% of Diesel’s prices and since the design was not well known, there was no case of passing off or likely consumer confusion. 

As to the registered design, Hoodies claimed that prior to it being filed, the jeans were on sale, so the design registration was void.

Judge Yaakov Shepser of the Central District Court noted that despite the differences, Hoodies had produced no evidence that there were other jeans on the market that were in this style, and that Hoodies’ jeans included at least 4 or the 9 new design elements. The judge also considered that there was a likelihood of consumer confusion. The Judge therefore ruled an injunction against Hoodies.

Hoodies claimed that as a basic Israeli clothing company, they were ‘honoured’ that Diesel had taken note of them.

 COMMENT

If Hoodies can show that the registered designs are void due to publication prior to filing, or at least that the stitching on knees, front pocket and back of trouser leg was used in Diesel or other jeans prior to the design registration, I think they should prevail.

If, however, there are valid design registrations for these features, I think the judge is correct that combining them with different decorative pocket stitches should still be considered infringing

 


Israel Supreme Court Upholds Ruling of Non-infringement of Breaking & Entering Patent, but does not Invalidate it

January 14, 2014

breaking and entering

In 1998, Ofer, Extinguishing, Extracting and Saving LTD supplied hydraulic systems for breaking into looked buildings manufactured by Holmatro to the Israel Ministry of Defense, where they were deployed by the armed forces for use in urban warfare. Further systems were sold in 1999 and 2000.

From 2000 to 2006, the Israel Ministry of Defense ceased to order from Holmatro and purchased systems from Hydro-Na LTD.

In 2007, needing to purchase 562 such systems, the Israel Ministry of Defense issued a tender in which Hydro-Na submitted a bid. However, in November 2011, the Israel Ministry of Defense announced that they would purchase future systems from Sun Hitech.

Hydro-Na filed Israel Patent Number 184211 on 25 June 2007 and it issued on 4 May 2009.

The first claim of Hydro-Na’s patent is as follows:

A system for forcible opening of an entryway by applying pressure to adjacent boundary surfaces, said system comprising:

  • a hydraulically operated pump unit for providing pressure to the system;
  • a hydraulic cylinder unit comprising a piston rod
  • a first anvil comprising a narrow wedge-shaped portion removably and rotatably mounted on the proximal end of said piston rod, said first anvil formed with downwardly facing friction gripping grooves on its surface; and
  • a second anvil comprising a pair of narrow, spaced-apart wedge-shaped prongs formed on the sides of a rotatable ring removably mounted on said hydraulic cylinder until, said second anvil formed with upwardly facing friction griping grooves on its surface;

Such that when the wedge-shaped portion of said first anvil is seated between the wedge shaped prongs of the second anvil so as to be aligned therewith and said first and second anvils are forcibly inserted in a seam between adjacent entryway boundary surfaces, operation of the pump unit applies pressure via the first anvil on a first adjacent boundary surface while said second anvil applies a contrary gripping counterforce on a second adjacent boundary surface, forcibly opening said entryway of said adjacent boundary surface.

There is a second independent claim and also a method claim, but the above claim illustrates the invention fairly well.

Hydro-Na also filed three Israel design applications for various sub-components.

Hydro Na tried unsuccessfully to obtain an injunction against Sun HiTech and to have their bid in the tender thrown out on various grounds as not fulfilling the tender requirements. The injunction was refused and the tender bid was upheld.

On allowance of the patent in May 2009 after accelerated examination, Hydro-Na sued Sun Hitech LTD, its shareholders and the Israel Defense Ministry for patent infringement and claimed 3,376,940 NIS (about a million dollars) in damages, filed for recall of the systems, and for a temporary injunction. The grounds were patent infringement, unjust enrichment, passing off, etc.

Judge Zerankin of the Haifa District Court ruled (T.A. 34912-11-09) that the patent was probably invalid since there were earlier systems known to Hydro-Na that were not disclosed to the patent office during prosecution, but noted that the rotatable ring was apparently novel and arguably inventive. He did not invalidate the patent, but found that there was no infringement since Sun HiTech’s system did not include this novel feature.

As to the designs, the Judge Zerankin ruled that the mechanical components weren’t designs in the meaning of Section 2 of the Patent and Design Ordinance.

Hydro-Na appealed to the Israel Supreme Court.

On appeal, Judge Amit noted that most of the issues were factual and had been examined by the Court of First Instance and appeals were not to retry evidence but only legal analysis.

In cases like this where the defense of the defendant is invalidity of the patent, the plaintiff has only to show infringement, since the rebuttable assumption is that the patent is valid and the defendant has to prove that this is not the case.

The expert witness for Sun Tech LTD, patent attorney Dr Goldreich, showed that there were a large amount of prior art, none of which was brought before the patent office.

Attorney Ed Langer appeared as expert witness for Hdro-Na, but since he wrote the patent and could not provide adequate justification for not relating to prior art, his testimony was found unreliable.

Judge Amit considered the Court of First Instance had been overly cautious in not canceling the patent in question, both on its merits and when considering the issue of equitable behavior with regards to the legal requirement of disclosing the prior art. He assumed that they not only withheld information from the court but also from their patent attorney. Nevertheless, he noted that he wasn’t required to relate to the validity of the patent since it could be shown that it wasn’t infringed.

As to various other claims by Hydro-Na, Judge Amit quoted Ecclesiastes (Koheleth) 7:14 ” It is good that you should take hold of this, and from that withhold not your hand, for the one who fears God shall come out from both of them.” Essentially, he dismissed them as “also ran”.

In conclusion, Judge Amit accepted the earlier court’s finding that ‘cold’ door forcing systems were on the market long before Hydro-Na’s application was filed. To the extent that Hydro-Na deserved a patent, it was for the rotatable ring which was not found in the competing system that won the tender. He noted that Hydro-Na failed to file abroad despite a market potential of NIS 150-225 Million Shekels and deduced that they were well aware that their patent was extremely narrow and easily invented around.

The appeal was unanimously rejected by a triumvirate of the Supreme Court consisting of Judge Amit (who wrote the appeal) and Judges Melzer and Solberg who affirmed his ruling.

Costs of NIS 50,000 were awarded to the Sun Hitech LTD and a similar sum to the Israel Ministry of Defense.

Civil Appeal: 7623/10 Hydro–Na et al. vs. Sun Hitech et al., 12 January 2014

COMMENT

The District Court applied the Gillette Test by declaring that the patent wasn’t restricted to the rotatable ring, it would not have issued.

The Supreme Court did a marvelous job citing the various sections of the Law and analyzing them. It was a little pedestrian and boring, so I haven’t reproduce in full.

I believe that the failure to disclose the prior art should have invalidated the patent and consider both Haifa Court and Supreme Court as being overly cautious in not doing so. What is the point of having a duty of disclosure if, on proof that the applicant withheld information, the court doesn’t invalidate the patent?

Whether or not Dr Goldreich was correct in her analysis that the rotatable ring wasn’t sufficient to be considered inventive, I wonder if there isn’t room for a procedure for referring a patent back to the patent office for reconsideration in view of additional prior art?

As to the registered designs, if Hydro-Na had sold them to the Israel Ministry of Defense prior to registering, they are invalid. Similarly if the same design is used by others. I haven’t read the original decision by Judge Zerankin but it seems that he considers such devices as inherently not-registerable, however, I think this understanding is incorrect. It is a shame that the Supreme Court hasn’t really addressed this issue, as although the Israel Patent Office has established practices regarding registering functional elements, there seems to be little binding legal precedent on this issue.

Finally,  is it ethical for attorneys-at-law or patent attorneys that drafted and prosecute a patent give a validity opinion? Is there attorney-client privilege and is it considered waived when client calls on the attorney as an expert witness? It would have been nice if the Surpreme Court had taken this opportunity to provide guidance to patent attorneys in this matter.