The sixth Best Practices in Intellectual Property Conference organized by Kim Lindy’s Intellectual Property Resources is scheduled for 12 March 2018 at the Sheraton, Tel Aviv. The event is followed by a morning on master classes on the 13th.
The conference is designed primarily to update in-house practitioners on IP global issues, trends and legislation that affect their company’s IP.
As usual Kim has lined up some prominent International in house IP managers, including Erich Andersen, the VP IP of Microsoft who will be presenting on “Intellectual Property Dimensions of Artificial Intelligence and the Future of IP”. There is also a Mock PTAB Hearing on Patent Eligibility with a former PTAB Judge and sessions including:
“Selling” Company IP to Senior Management
Friend or Foe: Licensing vs. Litigation The Ups and Downs of Licensing your IP vs. Litigating
Accelerations, Examinations US and EU: Tips and Tricks
Bringing Down the Costs: IP Budget Planning. How to negotiate with your patent attorney; Analyzing your patent portfolio
IP Protective Measures: Offensive v. Defensive Strategies
The conference promises to teach practical tools, methods and new ideas that can then be applied by participants to their own companies. There is a focus on IP Portfolio Management and Strategy, and attendees have the opportunity to interact with the IP decision makers of the world’s most global and successful companies.
I have written up and critiqued previous conferences. See:
- 2013 Conference review
- 2914 overview
- 2015 Conference review
- 2016 Conference review
- 2017 Conference write-up
I am aware that the conferences have a team of leading in-house counsel that have a say on topics covered, so can only assume that the program is what they want or feel that that their contemporaries need. and as a patent attorney who manages the IP for his clients in a pro-active manner, and deals with trademarks, designs, trade secrets, budget issues, enforcement, and the wider issues, I find the conference valuable. Nevertheless, to my mind there should be a session on IP developments in Israel since the issue is of relevance to all participants, and there are several grudge fights between competitors in the same niche suing each other and opposing each other’s patents, such as Camtek & Orbotech, Hanita and Iscar, Israel Aircraft and Rafael, etc.
Having worked in close collaboration with leading in-house managers, such as Einav Zilber who was the head of the Association of Israel Patent Attorneys in Israel on a presentation for entrepeneurs that was presented in parrallel with the AIPPI Conference, I am aware of the lack of familiarity with local law, regulations and case-law that leading In-House Counsel have. to put it bluntly, my role in the preparation of the presentation was to red-line slides that were to have been presented that were simply wrong. To put it another way, none of the in-house members of the committee would have passed the qualifying oral exam to be licenced in Israel without extensive revision.
The speakers and topics seem to repeat themselves from conference to conference, from year to year. The array of photos of the speakers is a little like flicking through a catalogue of suspect perps in an American cop series. Everyone is familiar. That is not to say that they are not competent. Just there is a feeling of deja-vu.
Professor Michael Birnhack of Tel Aviv University is lecturing to the Israel Patent Office on 24 January 2018 at 10:00 to 11:15 am on “Trademarks during the British Mandate”.
Professor Michael Birnhack is Associate Dean for Research, and a Professor of Law. He is the Director of the S. Horowitz Institute for Intellectual Property in memory of Dr. Amnon Goldenberg, and the Director of the Parasol Foundation International LL.M. He researches, teaches and writes about intellectual property, privacy law, information law, and law and technology.
Everybody is welcome but one has to register by email to Tamar Koby at email@example.com.
The Law Faculty at Tel Aviv University is holding a seminar on parallel Importing in memory of Dr Amnon Goldberg.
The event will be held on 4 May 2017 from 4:oo PM to 7:30 PM (16:00 to 19:30 for those who prefer 24 hour clocks.
Professor Michael Birnhack will give the opening speech, and then there will be a round table chaired by Dr Amir Khoury.
More details may be found here Parallel importing seminar.
The courts have ruled on parallel importing several times. In 2014 the Supreme Court discussed the issue in-depth in Tommy Hilfiger. More recently, Optika Halperin was sued by Luxvision for importing Zeiss lenses directly from a licensed producer in India.
No doubt this conference will address open issues and discuss the relative merits of licensees and the public good.
Cybersecurity M&A— Navigating US & Israeli Regulations
Please join us for an interactive breakfast seminar on navigating the complex web of risk posed by U.S. and Israeli regulations particularly as they affect cybersecurity‐related mergers and acquisitions.
The seminar will be conducted by James Glasser and Tahlia Townsend, co‐chairs of the International Trade Compliance group at Wiggin and Dana LLP (W&D), and Richard Mann, head of Mergers and Acquisitions at Gross, Kleinhendler, Hodak, Halevy, Greenberg & Co. (GKH). Tahlia and Jim advise some of the largest international companies in the world, including leading defense contractors, on U.S. economic sanctions and export regulations, the Foreign Corrupt Practices Act, and related matters, and Richard has advised acquirers and targets in many of the most significant cybersecurity transactions in recent years.
Viewed through the lens of risks arising in cybersecurity M&A deals, the seminar will cover disentangling encryption regulations, complying with data privacy requirements, dealing with the long arms of U.S. economic sanctions and attendant successor liability risks, and technology controls applicable to cross‐border cyber product collaboration, sale, and M&A.
In addition, if you or your clients are shopping for a U.S. cyber acquisition or hoping to sell cyber to the US government or its primes, the panel will flag key traps for the unwary, including a reminder about the Commitee on Foreign Investment in the U.S. (CFIUS).
(Wiggin and Dana is a qualified NY CLE [continuing legal education provider]. This program qualifies, depending on length, for CLE credits.)
DATE: Monday, 30 May 2016
TIME: 8:30—10:30 AM
LOCATION: Liliyot Restaurant, Beit Asia,
4 Weizmann Street, Tel Aviv
For more information or questions, please contact:
Conference in Memory of Arnan Gabrieli
Seligsohn Gabrieli & Co., together with the Haifa Center of Law and Technology are hosting what seems intended to become an annual event in memory of Arnan Gabrieli.
The conference seems to be in Hebrew. It is titled “קניין רוחני באינטרנט: הזדמנויות וסיכונים” which means IP on the Internet, Opportunities and Risks.
The event is scheduled for April 5, 2016, with registration at 4 PM.
Awards will presented to students, in memory of Adv. Arnan Gabrieli.
Professor Eric Goldman, the Director of the High Tech Law Institute, Santa Clara University School of Law, USA will speak on “Trademarks on Social Media” the language is not specified.
This will be followed by a session chaired by son-and-heir, Nahum Gabrieli on “Music Copyright, the Future on the Web”. The panelists include Professor Niva Elkin Koren of Haifa University, Law blogger and Adv. Chaim Ravia and Ms Orli Freund Maya, legal counsel of AKUM, the collecting society for Israel music.
I understand that the event is to be held at the Interdisciplinary Center, Herzliya.
4th Annual Best Practices in IP Conference
The IPR are hosting their 4th Annual Best Practices in IP Conference on May 30th, 2016 at the Sheraton Hotel Tel Aviv.
The Key Note Speaker is Marshall Phelps who was Head of IP at IBM and then directed Microsoft’s IP strategy.
Additional International Speakers include the usual suspects. See here for details of the program.
I have heard many of the speakers at previous IPR events and elsewhere. Indeed I’ve hosted a couple of them myself. Kim’s conferences are of a high standard and are usually thought provoking. The content is generally very practical.
For more details, contact Kim Lindy.
February 17, 2016
A week after the AIPPI Conference in Tel Aviv, the Intellectual Property Resources Institute (Kim Lindy) is running a three day course:
Patents and Trade Secrets:
Course for Inventors, R &D, Project Managers and Managers
March 27, 2016: General Overview of Patents and Trade Secrets
March 28, 2016: In depth Analysis of Patentability Requirements and Enforcement
March 29, 2016: Strategy, and Facilitating Communications with Patent Attorney
For more details, click here.
We note that this event is more expensive than the AIPPI conference which itself is not cheap. Kim’s conferences are usually very well organized and informative. I am familiar with many of the speakers and believe that this event will be informative and worthwhile for participants.
Click here for AIPPI_detailed_tentative_program
January 10, 2016
The second day of this two day conference was hosted by the Jerusalem campus of Ono.
The purpose of academic conferences seems to be to enable academics to present their ideas and to receive feedback. Academia in general should be about exposure to new ideas. Apparently this is no longer the case. Ono has segregated programs and different campuses. The Jerusalem campus seems to be designed to enable Ultra-Orthodox students to study Law and other subjects without exposure to students with different religions or philosophical perspectives. To be fair to the Hareidi men, I note that when I studied at the regular ONO campus, the female student fashion was thong knickers with low cut tight trousers, leaving acres of buttock on display and not leaving much for the imagination. At that time, the canteen at ONO was not under supervision, and there was a Christmas tree on prominent display but no mention of Chanucka. Nevertheless, I’d like to think that higher education is an environment where one can mix with people of different philosophies to the mutual enlightenment of all.
The campus is in Malcha and the seminar was held next door to the Israel Patent Office. Apart from Dr Bitton’s husband, Examiner Markowitz, no patent office staff attended any of the lectures. We suspect that unless they are allowed to attend and are paid as if working, the patent office staff are not interested in what academics have to say. The same can be said of employees of the two nearby patent offices. As a means of disseminating ideas and obtaining feedback, the conference did not seem to have much going for it.
The second day had three panels:
- Panel 4 titled Copyright, Regulation & Innovation
- Panels 5 titled “Innovation in Certain Industries” and
- Panel 6 titled “Innovation and Different Fields of the Law”.
To me, the term panel implies speakers with different perspectives interacting. This did not happen. Perhaps plenum would be a better word. A moderator introduced each speaker who presented his or her paper. There was no interaction between the presenters. Often though, their papers took opposite positions.
The moderator of panel 4 was a Dr Lior Zemer. I’ve not come across him before. He had a nice British accent though, and apparently hails from Leicester. Although not obviously religious, and possibly not religious, he made constant reference to his Rabbi and synagogue whilst growing up.
Looking at the second day as a whole, I think it could be summarized as follows:
It seems that where a government wishes to advance a certain policy, it may use regulations to do so. However, regulations do not always achieve the stated aims. Believing themselves able to predict future developments, governments sometimes regulate new industries, but it is often the case that such regulation is less than optimal and does not achieve the desired results.
Dr Neta Sagi looked at Innovation in Education.She concluded that there was never a stated ministerial policy to further innovation.
I would go one stage further. I would argue the standardized syllabuses, centralized education policy, teachers being employed for similar salaries in different schools, not having elitist schools or streaming based on ability and mainstreaming special needs pupils may have all sorts of sociological advantages but the output of the system is a standard product with a high level of ignorance and poor learning skills.
One of the presenters had a rather elegant bat wing pullover. I found myself thinking that women with bat wings shouldn’t flap their arms about. On reflection, I think it is probably more correctly stated that lecturers who wave their arms about shouldn’t wear bat wings.
Dr Yafit Lev-Aretz noted that PayPal and others were stepping into international banking but as they were not banks, they were not subjected to the regulations that traditional banks have. It was clear that companies such as PayPal and Google can access a tremendous amount of material regarding potential customers and one should be very careful with what one posts on line.
Dr Hanan Mandel discussed serendipity, noting that many innovations came about by accident rather than design.
Some of those presenting on patent related subjects seemed unsure of the difference between innovation and invention. This led to a repetitive confusion about whether inventor-innovators are companies or individuals.
Dr Katya Assaf of the Hebrew University discussed the Cobra Effect which is simply another way of saying that government intervention and regulation sometimes achieve the opposite effect to that which is intended.
This is certainly true. She went on to discuss the US patent system and noted that the current inventive structure does not work. She noted that NPEs were gumming up the system and concluded that the courts should discourage frivolous law suits by awarding costs against the plaintiff if unsuccessful. Nothing she said was wrong. The problem was that she was advocating what the courts are already doing.
In her defense she noted that she was based in Israel and not in the US, and that her frame of reference was a paper by Mark Lemley. In my opinion this is not a defense but an indictment.
In some academic disciplines, a familiarity with the academic literature is adequate. When looking at a problem affecting commerce and the court system, it seems to me that one can and should look into recent court decisions. This seems to be a useful field in which to compare and contrast the US system and that elsewhere.
Two or three years ago, IP professionals were suggesting that the problems with IP litigation in the US are:
- The cost of litigation is high due to broad discovery
- Since costs were not awarded against plaintiffs, they – particularly NPEs – have little to lose by filing and prosecuting weak law suits
- Damages were calculated on the basis of turnover of an infringing product instead of the delta attributable to the patent being infringed
- The East Texas rocket-docket whereby one could file suit in Texas and be fairly sure of the case reaching trial quickly before a patentee favoring judge
- Jury trials are expensive and patent infringement is too technical for a jury to deal with.
The US courts have taken this criticism on board and are making appropriate changes.
Dr Assaf’s paper is not wrong. It is simply passe. The problem is a lack of awareness of what is happening. If she had followed court decisions, attended professional conferences, listened n to the IP blogosphere or kept an eye on what was being reported in the business newspapers and noted the drop in the value of patents, she would have realized that her research lacked an inventive step over the prior art.
Dr Dov Solomon presented some research he has been conducting together with conference organizer Dr Miriam Bitton. The research looked into Securitization as a model for fast recompense for patent innovation. The authors seemed to be advocating that patentees could receive a lump sum in-lieu of royalties from investors. The example given to support this model was a deal negotiated back in 1997, when rock and roll investment banker David Pullman made a $55 million bond deal with David Bowie.
The Bowie Bond is a celebrity bond. It is a commercial debt security issued by a holder of fame-based intellectual property rights to receive money upfront from investors on behalf of the bond issuer and their celebrity clients in exchange for assigning investors the right to collect future royalty monies to the works covered by the intellectual property rights listed in the bond.
Bowie Bonds are asset-backed securities of current and future revenues of the 25 albums (287 songs) that David Bowie recorded before 1990. Issued in 1997, the bonds were bought for US$55 million by the Prudential Insurance Company of America. The bonds paid an interest rate of 7.9% and had an average life of ten years, a higher rate of return than a 10-year Treasury note (at the time, 6.37%).
Royalties from the 25 albums generated the cash flow that secured the bonds’ interest payments. Prudential also received guarantees from Bowie’s label, EMI Records, which had recently signed a $30m deal with Bowie. By forfeiting ten years worth of royalties, David Bowie was able to receive a payment of US$55 million up front. Bowie used this income to buy songs owned by his former manager. Bowie’s combined catalog of albums covered by this agreement sold more than 1 million copies annually at the time of the agreement. However, by March 2004, Moody’s Investors Service lowered the bonds from an A3 rating (the seventh highest rating) to Baa3, one notch above junk status. The downgrade was prompted by lower-than-expected revenue “due to weakness in sales for recorded music” and that an unnamed company guaranteed the issue.
David Bowie was not an unknown entity when the securitization deal was worked out. Most of the deal related to future incomes from albums that had reasonably predictable revenue streams. Due to technological progress changing the audience’s music listening habits, the investors lost out.
The model is not one that has been much copied in the entertainment industry. It is not clear to me that it has any relevance whatsoever to patent technology. Patents are either bought out right or are licensed. Licensing and investment in technology based industries is usually on a royalties basis since it is impossible to predict future revenue. If a third party is willing to make a global offer for patents, it will typically be well below the expected income as that party is taking the risk and the uncertainty.
The First day’s program at Bar Ilan was catered by Greg. The second day at ONO was catered by their catering subcontractor. Whoever it is makes delicious almond croissants, but apparently does not do small sizes. Instead, the full size croissants were simply cut up. There were also miniature quiche type things, and sliced vegetables and baguettes that were also cut up into quarters rather than the small rolls that Greg-Bar Ilan offered. I wondered whether this reflected the salami approach to academic publishing?
Lunch was in an Italian style restaurant next door that served pizza, shakshuka, salad, pasta with mushroom sauce and pasta with tomato sauce. It was very good. Greatly appreciated was the cappuccino style coffee which made the afternoon program easier to keep awake in.
Dr Shlomit Yanisky Ravid reviewed the Israel Supreme Court decision regarding service inventions in Barzani vs. Iscar. Readers of her book IP in the Workplace were not surprised that she was highly critical of the court giving value to a standard clause in an employment contract waiving rights to compensation for inventions and that she felt that the court had lost an opportunity to come to a more equitable sharing of the profits.
She noted that recent Chinese legislation rewards inventors of inventions for which patents are filed with a bonus of three months salary paid for by the state, and noted the enormous jump in Chinese patent filings and that suddenly several of the most prolific patenting corporations are Chinese companies. She couldn’t understand why Israel companies do not voluntarily give equitable shares to employee inventors and suggested that the sort of percentages given by universities were appropriate.
I noted that when comparing China with other countries, particularly Israel, one should normalize the numbers in terms of population, number of inventors or the like. Shlomit retorted that she didn’t think that the relevant sizes of the population was the explanation! I was aware she didn’t. She’d given her explanation. My point is simply that to convince an objective listener one can’t look at absolute numbers.
My second criticism goes to the central confusion of the conference in that the word innovation and invention were used interchangeably and people got into a muddle. Innovation is what companies do, bringing a new product to market. The patentable invention is only part of the story. Some R&D staff do dream up patentable inventions. Others, generally a team, develop the idea into a marketable product. R&D is where the product begins. Mass producing it requires manufacturing engineering, quality control, marketing and sales. If inventor employees are awarded enormous sums this will create internal friction within the company. International companies that do R&D in Israel will pull out. Universities do not employ people to invent. University salaries are generally lower than in industry, but the title ‘professor’ does to some extent compensate. One result of high compensation levels for university inventors is that the policy encourages applied rather than basic research. Whether a country the size of Israel can afford to invest in basic research or should prefer applied research is beyond the scope of this summary.
The above photo of Shlomit is from the Internet. Her current hair style has the hair extending arcing upwards and outwards and then falling away in a style reminiscent of the late UK Labour Leader, Michael Foot. As their views on labour are not dissimilar, this was rather appropriate.
The conference finished with a visit to Jerusalem Venture Partners (JVP), and the participants were exposed to the venture capital scene and to some innovative start ups. There was also free beer from a Jerusalem micro-brewery.
I enjoyed the conference, but an academic conference looking at innovation that was sponsored by two Israel colleges (Bar Ilan and ONO) in January, when there is a further conference looking into innovation sponsored by the AIPPI and a third university (Hebrew University) two months later, raises issues of duplication.
January 10, 2016
This is the first part of a candid review of a two day seminar titled “The Many Faces of Innovation” that was jointly hosted by Bar Ilan University and Ono Academic College and was held on 5th and 6th of January 2015.
The program, in Memoriam of Alberto Musy, was largely put together by Dr Miriam Bitton of Bar Ilan University who is married to Patent Examiner David Markowitz. The cross-fertilization between the Patent Office and the Law Faculty at Bar Ilan has been rather fruitful, and many of the participants seemed rather more interested in their baby daughter Oriah, aged 6 months, than in the presentations themselves.
I missed the first part of the seminar. I’d left enough time to get to Bar Ilan University, but hadn’t reckoned on requiring a lot of time to park and that sign posts pointing to the building number were in the wrong direction.
I also did not take into account that when I arrived at the building and used the bathroom on the ground floor, that the door would close behind me and would latch closed, with the handle being missing!
In my magic career I’ve done various feats of escapology. I gave up the strait-jacket escape as I have a problem getting into the garment… but that’s another story.
I don’t want to laboriously go through all the lectures. I blogged the event in advance as soon as I received an invitation and don’t think that I need to make up for poor publicity on behalf of the organizers or for the practitioners and academics who didn’t bother to attend. Apparently the papers themselves are available. I have asked for access and if I get it, will read and comment on them in more depth.
The first day of the program , hosted at Bar Ilan University, provided a diverse range of plenums titled “Innovation &… where the triple period was a Markush group comprising Competition, Trademark & Design Law, and Patents.
The second day was hosted by the Jerusalem campus of Ono and included an interesting twist with panel 4 titled Copyright, Regulation & Innovation. Panels 5 and 6 were titled “Innovation in Certain Industries” and “Innovation and Different Fields of the Law”.
All in all there were 23 separate presentations about different aspects of innovation, excluding the welcoming remarks and a keynote lecture about Alberto Musy’s legacy.
Some of those dealing with patents seemed unsure of the difference between innovation and invention. This led to a repetitive confusion about whether inventor-innovators are companies or individuals.
I got the general impression that the presenters were engaged in fairly blinkered focused research and were myopic regarding the wider picture. Many seemed to show a lack of robustness regarding their own research. Some ideas seemed half baked.
Mr Quiang Yu spoke about Innovation, Market Analysis in Merger Control. His English is much better than my Chinese. Nevertheless, focusing on his message was difficult and his constant referral to innowation was distracting. Then Prof Sahil Mehra examined the interesting topic of completion law in a post scarcity world.
Lunch was a high quality buffet provided by Coffee Greg, which has the catering franchise for the Law Department. There was a range of salads, filled rolls (that seemed to be either sliced hard-boiled egg and tomato or sliced hard-boiled egg and tomato), fresh fruit and fancy biscuits, and burekas and rugelach type things left over from the morning break.
In the afternoon, the Commissioner, Adv Asa Kling spoke about the pending Israel Design Law, and how it came about. (Surprisingly, and possibly returning from a Patent Office training seminar, Adv. Kling was not wearing a jacket and tie. Indeed, the informality of the entire seminar was welcome).
Adv Kling described the current (ex-British Mandate) Ordinance and its quaint peculiarities, such as only local novelty being required, and that, as commissioner, he had far wider discretionary powers regarding design regulations than those regarding trademarks and patents, but certain aspects, such as assignments or licensing required deferral to the court.
The commissioner also noted potential problems that the current version of the pending law introduces. For example, unregistered designs will be protected for three years, but how without registration one can show when a design was published was not addressed. With classical copyright, the protection is narrow but long lasting. It is far from clear how similar an infringing product needs to be to a non-registered design for it to be considered as infringing.
Perhaps unfairly, I asked the commissioner if, despite his view that the commissioner’s powers re design regulations were wider than for patents and trademarks, he considered his predecessor’s widening of local disclosure to include the Internet was ultra-vires. Not surprisingly, he declined to comment. He did, however, opine, that the unregistered design clause was introduced to define and limit the A.Sh.I.R. ruling where the Tel Aviv District Court and the Supreme Court led by then Chief Justice Aharon Barak recognized the tort of Unjust Enrichment as grounds for suing for infringing unregistered designs under certain conditions. I have no doubt that he is correct. However, I think that the Knesset should simply over-rule and reverse the A.Sh.I.R. ruling and note that Unjust Enrichment is not applicable with regard to product design.
Prof Deborah Gerhardt spoke on ‘Thought Leadership Through Branding’. It seems that her field of interest is brands selling themselves as having a social conscience, and using buzz words such as sustainability, third world investment, etc. This is a recent trend that is worthy of research.
Prof Gerhardt noted that brands could create social change, and gave the example of Target and Walmart banning weapons where the United States government seemed unable to act. She gave other examples such as a shoe manufacturer donating shoes to a child in the third world for every pair sold in the West, and mentioned Bumble Bee, an Israel company doing ecologically friendly work. She asked for other Israeli examples which we provided during the break. One of the things that she discussed was mission statements.
I am a little skeptical about these. When my wife was a senior engineer in one of Israel’s successful innovative companies, she was part of a group attempting to define a mission statement prior to an important meeting with investors. She gave me the buzz words and told me what they were trying to achieve and I wrote something that seemed appropriate. When I picked her up from her office a week later I found my sentence nicely printed in the company’s colours on an appropriate background and signed by the president and CEO. I think that in generaly, the mission statement of a company is simply a marketing slogan. Nothing more. It does not define the company. In this instance, the company had a real social conscience and positive attitude regarding its employees. It also invested in the local community and I know for a fact that the CEO’s wife was and is involved in a valuable educational initiative that the CEO was largely funding. I think the company and the CEO were doing great charitable things and the company’s product was truly innovative and ecologically friendly and a contribution to human progress. The mission statement, however, was just a trendy marketing gimmick.
There was some talk about brands becoming user experiences rather than merely products.
The talk gave me food for thought. My conclusion (not Prof Gerhardt’s) was that branding and trademarks enable companies to have identities. This enables them to have an impact on policy and to set an example. This also enables them to be held accountable. In other words it was a justification for branding and justified the speaker’s contention that brands can be more than the product itself.
Dr Neil Wilkof (currently lecturing at Herzliya and practicing TM Law at Bressler’s after being early retired from the prestigious Law Firm of Herzog Fox Neeman) spoke about Co-Branding and its contribution to innovation. I understood from his talk that by co-branding he did not mean simply symbiotic advertising. I also understood that his student daughter had messaged him with the question of whatco-branding meant, so the term is not obvious. The problem was that with so many asides regarding his daughter’s academic career and the elementary schools in Cincinnati that he had attended and one of the visiting academics might have but actually didn’t, and perhaps because though the lunch was great, the coffee was instant/botz, rather than freshly ground, I managed to miss the point of the talk and can’t report what co-branding means and what Neil’s insight into this was!
I regularly read Neil’s posts on the IPKAT and no that his interests are wide. It was clear from his talk that he was a practitioner and there were interesting points to think about such as his noting that in discussion with the branding people at Disney he understood that they had never had a joint meeting with the trademark department. He also mentioned that for a number of years about a decade earlier, he was the IP department at Bar Ilan… I found myself wondering if the change was a positive development or an illustration of Parkinson’s Law.
Dr Michal Shur Ofry (Hebrew University) spoke about Access to Error. She chastised the patent system for only publishing positive results and not the negative ones and focused on the Novartis patent for sildenafil citrate (Viagra) to illustrate the problem she had with the dysfunctional patent system. She expressed the belief that patentees should include their misguided research and should also be more focused on the real results. She simultaneously advocated for greater transparency in patent drafting with all alternatives discussed and for more focused patents. She also suggested that people should publish journals of unsuccessful approaches.
I found the presentation full of internal contradictions, at least on the theoretical level.
I pointed out that the Novartis –Teva decision in Canada brought as evidence of the failure of the patent system was actually an example of where a patent was voided for claiming more than it deserved. As a practitioner who reviews patents in diverse fields (including pharma) I don’t think that professionally drafted patents are generally unfocused, although some are written by incompetents, mistakes happen where the attorney is out of his depth, there is a breakdown in communication between marketing, management, R&D, the patent department or outside contractor.
In the case of pharmaceutical patents, the applicant has to file before publishing, which generally means before exhaustive clinical trials. In the need to prevent a similar but not identical molecule having similar physiological properties from slipping through the net, the applicant generally uses a funnel claiming structure and tries to protect a class of molecules for a behavior displayed by one example. Whether or not Novartis exaggerated in the Viagra patent is not clear. Different courts came to different conclusions. However, it seemed to me that Dr Shor Ofri was citing a single case and using it to tar an industry.
Dr Shor Ofri referred to the USPTO issuing “bad patents” without defining the term. From the discussion, it seems that the alleged problem is that in 50% of patent infringement cases litigated by the courts, the patent is voided. I see this as a perfectly reasonable statistic. It means that in about half the cases where a complaint is filed and the sides can’t reach an agreement, there is infringement and in the remaining 50% of the cases, the patent should not have issued. Very few patents are challenged. I don’t assume that all non-challenged patents are valid. However, one can’t look at those that reach the courts as typical. Furthermore, the cases reaching the courts typically issued several years ago. Searching in the US as elsewhere has become more thorough in the past few years. Whereas in the past, the Examiner only searched US patent records, now other English language patent documents are regularly cited. Scientific journals are also cited. With the duty of disclosure in the US and important patent applications being filed multi-nationally, the US examiner typically has the search results of examiners elsewhere. The percentage of US patent applications issuing has also dropped.
As to publicizing failures – people publish for financial gain or for their reputation (pride, honor). (The third great drive, sex and libido, is of relevance to the Novartis patent, but is less apparent in many other technical fields).
(I do note that I like the title of her 2009 Seminar Paper Hebrew University of Jerusalem—Faculty of Law—Faculty Seminar—”Popularity as a Factor in Copyright Law”).
I am open to be swayed by clear, well-reasoned and well researched presentations. This was an attempt to cast an outlier patent that was voided as an indicator that the system fails. In the forthcoming AIPPI conference, Dr Shor Ofri is giving a presentation on the same topic.
At this stage Professor Martin Adelman stood up and announced that the Canadian judges had got it wrong and everyone except the judges knew that the patent related to Viagra.
The role of a mediator
Professor Martin Adelman chaired the next session. He has been an academic since 1973 and has donated a fellowship to Haifa University. Prior to becoming an academic, he practiced as a patent attorney in the Detroit area. Professor Adelman has testified as an expert on patent law and practice in over 190 federal court cases, written many law review articles, and for 25 years was the sole author of the continuously updated nine-volume treatise titled, Patent Law Perspectives. In addition to teaching international and comparative patent law, intellectual property (IP), antitrust law and a shared course on chemical and biotech patent law with Professor Joseph Straus at George Washington University, Professor Adelman regularly teaches patent law courses at Bar-Ilan University Law School, The Hebrew University Law School and at the Munich Intellectual Property Law Center. Here is someone who understands patents and can read them.
I think Professor Adelman would have been a great lecturer on the program. Instead, he chaired the next session.
As a chairperson, he was a poor choice. Instead of the common problem of not controlling the speakers running to time, and letting things become a shambles, in a manner reminiscent of Dr Abshalom Kor, Professor Adelman spoke far too long when introducing speakers. My first thought was that he was merely overbearing. However, by the end of the session concluded that he was actually heckling his speakers and dismissing their papers on ridiculous grounds like the lack of applicability of a model due to TRIPS, and doing so before they spoke. Sure academic models can be difficult to implement because of international treaties, but these are not cast in stone. Nor is a model that can’t be implemented of no value. That as may be, once someone is invited to speak, the chairperson of a panel should ensure that they can do that. One of the speakers, Professor Emily Michiko Morris actually went so far as to request from the organizers not put her on one of his panels again.
It seemed that instead of the dinner for lecturers being a thank you for their participation, in this instance, it seemed to be the focal point of the conference and Marty felt that the speakers whose presentations were unimportant anyway, should not bother so they could all go to supper instead!
An overall view of the talks is that each one had their own take on regulation, prizes, policy and patents.
The most interesting talk was by Dr Ofer Tur Sinai of Ono College. Citing the US Constitution that “The Congress shall have power . . . . To promote the progress of science and useful arts, by securing for limited times to authors and inventors the exclusive right to their respective writings and discoveries.” Dr Tur-Sinai acknowledged that the purpose of patents was to promote progress, and instead of going the usual academic route of analyzing to what extend patents achieve this, Dr Tur-Sinai asked whether progress was a good thing or not. In this he relied on utilitarian philosophers who discuss things in terms of happiness and wondered if progress makes one happy. Maybe people want the wrong things?
Surprisingly, William Ludd was not mentioned. Nor was Adam Smith. Nor was the grand experiment between Western innovation and progress and how happy people were in the Soviet Union. There was no attempt to compare longevity, health, rate of achievement or indeed anything else over the past 200 years.
Ofer finished with mentioning that he had seven conclusions but would stop for questions and maybe these would come up. They didn’t and I am left wondering what the Seven Oferite laws, Halacha from Tur-Sinai are. This was frustrating. When I noted this the following day, he denied having seven conclusions.
In some respects Dr Ofer Tur-Sinai’s presentation was blue ocean academia at its best. It attempted to challenge preconceptions and to look into alternative models. In other respects it was what Ulysses S Grant would consider an idea so ridiculous that only an intellectual could have thought of it.
The Many Faces of Innovention
Bar Ilan University and ONO Academic College are discretely holding a two day international conference on 5th January 2016 in Bar Ilan and on 6th January 2016 in the Jerusalem Campus of the ONO Academic College.
The Jerusalem campus of the ONO Academic College is not in Ono. It is in the Malcha Technology Park next door to the Patent Office.
The programs are appended.
The cinammon coloured program is the one at Bar Ilan. The lime green one is at ONO.
If you click on them they should open up to something a little larger.
Upcoming conferences April 28, 2015
With the annual INTA bun fight in San Diego starting next Sunday, it is easy to overlook other IP events.
Kim Lindy’s highly professional annual IP Best Practices Conference is scheduled for May 11th and 12th in Tel Aviv. Details may be found here.
The Ninth WIPO Advanced Intellectual Property Research Forum, a joint three day collaboration between WIPO and the Faculty of Law, Hebrew University of Jerusalem, is taking place from May 26 to May 28 at the WIPO campus in Geneva. This initiative was put into place and initially organized by Ms. Li Maor and is headed by Dr. Guy Pesach, Associate Professor, Faculty of Law, Hebrew University of Jerusalem. Moshe Leimberg has taken over from Li Maor, and can be contacted for more details.
The Israel Patent Office if holding a one day seminar on the Patent Prosecution Highway. The event will be held between 9:00 AM and 12:30 PM at ZOA House, Ibn Gvirol 26, Tel Aviv on 26 November 2014.
COMMENT – This is a welcome development. Nevertheless, I suspect that the patent office has forgotten what it is like trying to get into Tel Aviv by 9.00 AM.
WIPO’s Arbitration and Mediation Center, the Israel Patent and Trademark Office, the Israel Ministry of Justice and the Tel Aviv and Central Region Chamber of Commerce are hosting a one day seminar on trademark mediation.
The event is directed to lawyers with an Intellectual Property leaning. Most of the lectures will be in English.
Proceedings before the Patent Office or the Courts are generally time-consuming and expensive. Often the parties in a trademark conflict can find sufficient common ground to reach an amicable or at least mutually acceptable solution. The event looks like a valuable seminar for those of us who are less interested in negotiating conflict resolution.
The event will be held on Wednesday 11 December 2014 between 9 am and 5 PM at the Chamber of Commerce, Hashmonaim 88, Tel Aviv. Registration is via phoning *8111.
The AIPPI (Association Internationale pour la Protection de la Propriété Intellectuelle) is hosting a conference titled “How to Make IP Work for Businesses”. The conference will be held on 10 and 11 November 2013 at the Dan Panorama Convention Center, Tel Aviv, and apparently features over 80 speakers from Israel, US, Europe and Asia, with up to three parallel sessions going on.
The full program may be found here: AIPPI Seminar Nov 10-11, 2013 (2)
March 2, 2013
Kimberly Lindy of IPR is organizing a conference at the end of May that is entitled “Best Practices in IP 2013 – INTERNATIONAL PERSPECTIVES ON CREATING AND EXTRACTING VALUE”.
The event, designed for In House IP Professionals, General Counsels, CFOs and CEOs and their advisers, offers an opportunity to discover how key industry players are building, managing, monetizing and protecting their IP rights.
The conference will enable participants to learn new ideas that they can then apply to their own company. The goal is to teach strategies that build and safeguard a company’s IP portfolio and increase the value it creates for the business. Participants will hear how their peers in International companies arrange budgets for IP investment, and how to value their portfolios. Ideas on monetization will be discussed, as will how to benchmark external providers to ensure that companies receive the most value for money.
The conference will focus on monetization strategies and portfolio management. Plenums with geographical focus are planned so that attendees can tailor their agendas by selecting sessions. The quality lunch will be an opportunity for round-table discussions, and there will also be time for one-on-one business meetings with a choice of solution providers.
The International list of speakers includes: o Ruud Peters, Chief Intellectual Property Officer Philips Group Innovation Intellectual Property & Standards (Netherlands) o Luc Savage, Director Intellectual Property and Licensing France Telecom/Orange (France) o Eric J Siecker, Head of Intellectual Property – Europe, Africa, Middle East & CIS., Caterpillar, Inc. (UK) o Kevin Cranman, General Counsel, Ericsson Television Inc. (US) o Andrew Browne, Senior IP Counsel Shell (Netherlands) o Steven Steger, Founder and Managing Partner Global IP Law Group. (US) o Paul Lerner, Vice President, WiLAN. NASDAQ traded patent monetization company with annual revenue of $100M. Bought the Alvarion portfolio for $19. (US) o Daniel Papst, Managing Director, Papst Licensing GmbH & Co KG Largest patent monetization company in Europe. (Germany)
Date: Wednesday May 29th 2013 Hours: 08:00 – 16:00 Place: Sheraton Hotel Tel Aviv
This looks like being a very interesting and quality program. The online conference site will be going up shortly. In the meantime, for more information or to register, please contact Kim directly at firstname.lastname@example.org
On 21 March 2012, the Law Department of the Hebrew University of Jerusalem is hosting a seminar titled “Global & Local Innovations in Patent Law”.
The program will start with registration at 8:45 am, and at 9:00 am, Prof. Barak Medina (Hebrew University), the Commissioner of Patents and Trademarks Adv. Assa Kling and Dr Guy Pessach (Hebrew University), will provide words of welcome.
The morning program proper starts at 9:30 with Professor Martin Adelman of George Washington University speaking on “Legal Developments in the United States”, followed by Dr Miriam Biton (Bar Ilan University) at 10:15 on “Updates in the Israel Law”.
After a coffee break at 11:15 am, Dr Amir Khoury (Tel Aviv University) will speak on “Developments in Europe and Internationally”.
At 12 PM there will be a question and answer session – but it is not clear who is questioning who. I suspect the speakers mentioned above will take questions from the audience.
From 12:30 to 2 pm there will be a lunch break, followed by an afternoon program devoted to developments and changes in patent examination in Israel.
Adv. Assa Kling will talk on the topic “is there an alternative to patent examination?” and Adv. Amit Ashkenazi the legal counsel to the Law and Technology Agency will talk on “Government and Web 2.0 – Legal Ramifications of Public Involvement”.
At 3:30, the coffee addicts will have a fourth opportunity to get their caffeine fix, and
at 3:45 Adv. Tal Band (Shin Horowitz) will talk on “Public Involvement and Intervention in Patent Granting in Israel” followed at 4:30 by Adv. Howard Poliner, Dept. of Advice and Legislation, Ministry of Justice, on “the Public Face – Responses”.
At 5:15 there will be a further opportunity for questions.
To register: email@example.com the event will be held in Bet Meyersdorf in the Mt Scopus Campus.
Branding and Trademarks מיתוג וסימני מסחר
On 9 February 2012, WIPO, the Israel Patent Authority and the Department of Trade and Industry are holding a seminar on “branding and trademarks”
The event will take place from 4:00 PM to 7:00 PM at Trade Federation House, Rehov Hashmonaim 84, floor 1.
The purpose of the meeting is to provide small and medium sized businesses with tools for managing their IP.
Uriel Lyn will open the event.
Doron Goldberg will talk on branding
Anat Levi, the Head of the trademark Department at the Israel Patent Authority will discuss trademark prosecution before the Israel Patent Office and Adv. Eran Soroker will discuss the nature of non-generic characterisation of marks, slogans, and 3D marks.
No charge to attend, but limited seating. Please contact inbarm@chamber org. il to register.
The Forum of In House IP Managers, Israel
Announces the Next Meeting
“My Way or The Highway: Patent Prosecution Highways and Other Forms of Acceleration:
16:30 – 17:00 Registration, Informal Networking, Light Refreshments
17:00 – 17:45 Pros & Cons of the Regular Patent Process by Zeev Fisher of the Fisher Weiler Group
- · What’s wrong with the regular patent process?
- · What’s good about it?
- · Comparing patent acceleration routes in the US, Europe, Japan, China and Israel
- · Accelerations Vs. Examination Waivers
- · Overview of the Patent Prosecution Highways – the examination of the future – different PPHs in existence, why do it and why not; strategies on winning back scope
17:45 – 18:00 Short Break
18:00– 18:45 “Poor’s man Acceleration” The Unspoken Right of Utility Models.
- · Explore the definition of this most underutilized extremely handy and useful IP right
- · How and when to use it
- · Comparing and explaining the territorial rights in US, Europe, Japan, China, Korea, Russia
Rachel Diamant of IP Business Strategy to large and small companies.
On 14 February 2012, the AIPPI will be amorously promoting an event to examine the ramifications of the America Invents Act.
The event, open to members, is to be held at the Dan Tel Aviv Hotel 99 haYarkon Street (my idea, Claude Sterne of Quinn Emanuel who is speaking and sponsoring the event asked me to suggest an alternative to the Tel Aviv Hilton).
The program will run from 8:30 am to 1:30 PM, starting with coffee & cake, and finishing with a light lunch.
It’s not all food though. Food for thought will be provided by Adv. Theresa Kavanaugh of Goodwin Procter who will talk about the ramifications of the America Invents Act on patent prosecution.
After a coffee break, Adv. Claude Sterne of Quinn Emanuel will inform us as to how the Act will affect prosecution, and then Dr Yehuda Livne of Teva will provide an Israel perspective.
To register, contact firstname.lastname@example.org
Isn’t it great that IP Resources and the AIPPI combine forces to provide a full day patent program for Israeli patent enthusiasts, so we can forget that other people are involved in romantic activities on Valentine’s Day!