World Intellectual Property Day – April 26

March 27, 2018

world IP dayThe World Intellectual Property Day takes place on 26th April 2018, and the AIPPI conference in Tel Aviv takes place on April 30th and May 1st, i.e. on International Worker’s Day.

Someday got confused???

meet and mingle.jpgMeanwhile, IPR’s In House IP Managers Forum is hosting a Meet & Mingle for in house IP practitioners on April 26th in honor of World Intellectual Property Day!

The event is sponsored by Patentest, a patent search organization, and is in Hod HaSharon between 4 and 7 PM. The event free,  but is only open to In House IP Managers. For more details, contact Kim Lindy.

Not to be outdone, Professor Michael Birckhack of the Shin Horowitz Intellectual Property Institute of Tel Aviv University is hosting a round table discussion on the effect of three dimensional printing on Intellectual Property. The program will feature Dr Amir Choury, Dr Yantizky Ravid, Deputy Cmmissioner Jaqueline Bracha, Adv. Dan Yadin and others.  For full program, see S.Horowitz_INV26-4-18 (1). Open to all, but by registration.


Can a Request for a Patent Term Extension be suspended?

March 26, 2018

As a general rule, issued patents may be enforced for up to 20 years from their effective filing date so long as renewals are paid. Pharmaceutical Patents are an exception. Because of the time-consuming and expensive testing procedures required before a new drug can be sold, it is possible to obtain a patent term extension, providing up to five years’ additional protection for a new drug in certain jurisdictions to give up to 14 years of effective monopoly after obtaining regulatory approval in at least one market granting patent extensions.

Potentially the sales of a successful patented pharmaceutical may be billions of dollars a year. Israel is one of the countries that does grant such patent term extensions. The relevant section of the law is complicated and has been amended more on several occasions to remove misunderstandings. This ruling concerns what happens when there is both an issued and several pending applications. Can requests for patent term extensions be applied for the issued and all pending applications, and then suspended until the patents issue? Doing so would enable the Applicant to make sure that a patent is extended for as long as possible, and there has been a ruling where the request for a Patent Term Extension was suspended pending examination of a divisional application.

multiple myeloma

Multiple myeloma, also known as plasma cell myeloma, is a cancer of plasma cells, a type of white blood cell normally responsible for producing antibodies. Often, no symptoms are noticed initially. When advanced, bone pain, bleeding, frequent infections, and anemia may occur. Complications may include amyloidosis.  NINLARO is a prescription medicine used to treat multiple myeloma in combination with the medicines REVLIMID® (lenalidomide) and dexamethasone in people who have received at least 1 prior treatment for their multiple myeloma. NINLARO is the first and only oral medication that includes a proteasome inhibitor that can be taken at home.

The Case

Millennium

In August 2008 Millennium Pharmaceuticals submitted Israel Patent Application No. 203641 titled ”PROTEASOME INHIBITORS”. This was allowed in 2015, but Teva filed an Opposition. The patentee requested suspension of a request for a patent term extension until pending applications IL 210056, IL 234285, IL 242291 and Il 242282 were examined.

ninlaro

On 9 August 2016, the drug Ninlaro which includes the active ingredient Ixazomib as the citrate salt was registered. On the basis of this registration, the patentee requested patent term extensions to IL 210056, IL 234285,    IL 242291 and Il 242282 and to IL 203641.

At the time that the patent term extension was requested, none of the patents had issued. The Applicant requested an extension period under Section 94(e)(ii) of the Israel Patent Law 1967, and the requests for patent term extensions were not considered at the time of their submission. However, on 9 November 2017 after an Opposition against IL 203641 was withdrawn, the patent issued.

On 20 November 2017, the patentee requested that the patent term extension for
IL 203641, which was the first allowed patent, remain suspended pending the allowance of the divisional patent application Nos. IL 242291 and 242292. The Applicant was invited to explain himself orally, particularly since the filing and prosecution of divisional applications was something over which the Applicant has some control.

After the hearing was scheduled, the Applicant made a further submission stating that there was a mistake in the original suspension request and that it should be requested to further relate to IL 210056 and its continuation – IL 234285.

The divisional patent application Nos. IL 242291 and 242292 were allowed and published for opposition purposes on 31 December 2017 but IL 210056 and IL 234285 are still pending. However, in a hearing on 2 January 2018 the Applicant alleged that the remaining objections against these are of a formal nature and the completion of their examination is expected shortly.

The Applicant’s Claims

The Applicant argues that if he does not suspend the patent term extension request for IL 203641, it is likely that the patent term extension will be granted before the other patents issue and before it is possible to consider patent term extensions based on them. In such a scenario, the Applicant will have to request a Patent Term Extension on the first patent to be allowed, and not necessarily on the patent for which they want the extension.

The Applicant bases his position on the ruling by then Commissioner Asa Kling concerning IL 184027 to Novartis AG from 10 October 2016 where the request for patent term extension for an issued patent was suspended pending allowance of a further patent for which a patent term extension was requested. The main argument used was that the progress of the patent examination was not in the hands of the Applicant.

The Applicant explained that the filing of the patent application or a divisional application of an existing patent does not put the Applicant in ‘control’. The Applicant cannot determine when a patent is examined, when the allowed patent is published and if oppositions will be filed, and the case is thus similar to IL 184027 to Novartis AG.

The Applicant notes that even if allowed, the pending patents will lapse in 10 or 12 years. This long period until the patents lapse tips the scales in favour of the Applicant, since suspension of the patent term extension procedure will not adversely affect the interest of third parties. Furthermore, even if the Examination is not suspended, the patent term extension for IL 203461 which has already issued cannot be completed since there is no corresponding patent term extension in the US or Europe.

Ruling

The Israel Patent Law does not relate to the order in which a number of Patent Applications for the same formulation are to be considered for the purpose of Patent Term Extensions under Section 64a of the Law. However, Section 64d(3) states that one cannot obtain more than one patent term extension for any material or for a number of patents that relate to one pharmaceutical formulation. For the sake of brevity, these will be referred to hereunder, as parallel applications.

The question that arises in such cases is when does the Applicant have to decide which patent, of those pending, does he wish to extend, and he has to abandon the possibility of obtaining a patent term extension for the other cases.

Examining a number of parallel patent applications for patent term extensions was examined in the case of IL 130492, IL 127115, IL 176921, IL 142282 and IL 216249 to IMMUNEX CORPORATION from 29 June 2016. In that instance, the possibility of suspending an application for suspending examination of a patent extension request was also considered.

In that instance, the Applicants alleged that under Section 64d(4) of the Law, the right to a patent term application only crystallizes once it is actually granted, so in cases where the Applicant files several applications for patent term extensions in one go, they should all be left pending, including those issued, until at least one receives a patent term extension, and only then should the Applicant have to abandon the other cases.  An alternative claim that arose is that where the examination of other corresponding patents cannot be suspended until an extension is granted, the Patent Office should publish a number of notices concerning the intention to grant parallel patent term extensions, thereby not obliging the Applicant to abandon the Applications before a patent term extension is granted following publication for opposition purposes.

In re Immunex, the Applicant’s claims were rejected by the then Commissioner Asa Kling who ruled that where several parallel applications for Patent Term Extensions are examined, after examination, the intention to allow an extension for one of the cases should be published and the other applications should be abandoned, despite the fact that no final decision to grant a patent term extension had occurred, merely the intention. In the ruling it was stated:

An arrangement of this type under Section 19 of the Law was not set out in Section 1b of Chapter D of the Law. Were it to have been the intention of the legislators to have established a similar arrangement for all the applications for patent term extensions, it would have stated this explicitly. Without such a mechanism, the lacuna cannot be rectified by judicial commentary, unless there is no alternative.

In this regard, it is noted that the legislative did give guidance on the order of examination for patent term extensions that relate to a patent that has not yet issued. In Section 64v(b) of the Law it was stated that a patent term extension request would not be considered until the basic patent  issues. From that stated, one can learn what is not stated. Since the legislative did not rule something similar regarding examining different patent term extension requests, it can be deduced that there is no suspension arrangement where this does not serve the legislator’s intention in Section 64v(b) or other purpose that arises.

In this regard, one should consider the two Immunex rulings from 2 April 2015 and from 7 September 2015. Then Commissioner Kling then gave some guidance of how to consider examination of several patent applications. In such cases, one does not expect the Applicant to abandon an application for a patent term extension before it is examined and the Applicant is entitled to exploit the examination through to conclusion, i.e. until an intention of granting a patent term extension is published. These proceedings can sometimes take years, particularly where oppositions are submitted.

The issue of suspending the examination of parallel applications also comes up in cases where the patentee has both an issued patent and a pending application where, for one of these, there is a patent term extension for the same medical device.

From the Law in Section 64v(1), the patent term extension must be examined within 60 days from filing. As to the request for a patent term extension, Section 64v(2) of the Law sets out an exception that states that the request for the patent term extension will not be considered until the patent issues. This may take years, particularly if an opposition is submitted.

Consequently, the Applicant can choose that a patent term extension that relates to the issued patent may be examined within 60 days of the filing date and, if found eligible, can obtain the Extension. However, if the Applicant wants to elect the pending application for the patent term extension, he should abandon the other cases before they publish, as per the Immunex decision. Thus, he should wait for a patent to issue before the request for a Patent Term Extension be considered. During the period, the Applicant does not know how long the patent will last, and whether it will survive oppositions proceedings should any be submitted.

The requirement for the Applicant to abandon requests for patent term extensions for other patents prior to being awarded a patent term extension for the desired patent may leave him bald on both sides. For example, if for some reason the patent chosen is not extended due to an opposition being submitted.

This issue was addressed by then Commissioner Kling in re Novartis AG, where he ruled that the examination of a patent term extension for a registered patent will be suspended until any oppositions of parallel applications are finished, so that the Applicant can have both parallel applications examined. Thus the then Commissioner ruled:

As stated, in this instance, the consideration of the request for a patent term extension will be suspended for one of the applications. As per the Applicant’s request, Application IL 184027 to Novartis AG has not issued since an opposition was submitted which is proceeding first, since the opposition proceeding is not entirely within the control of the Applicant.

If the request for a patent term extension was not suspended, the Applicant would be in a situation where he would not be able to complete the examination of the two requests for patent term extension where there is nothing to stop him submitting them and benefitting from them.

In these circumstances, and in the absence of any other temporary step, by suspending the request for a patent term extension for a patent for as long as a patent application cannot be examined, the intention of the legislators of Section 64v(2) is fulfilled.

Consequently, the examination of the patent term extension of Application IL162661 shall be suspended until the earliest of the examination of the patent term extension for IL 184027 to Novartis AG if it issues, and the acceptance of the opposition and the rejection of the Application No IL 184027 in its entirety.

Thus the Commissioner required that in re Immunex, the application for a patent term extension be considered under the 11th amendment of the Law from 2014, in paragraph 2430 page 274, which defined the examination period there.

Since section 1 of Chapter 4 does not relate to these issues, one has to find the correct balance between the interest of the Applicant to utilize his right to a patent term extension, and the competing interests such as certainty, reasonableness and the rights of competitors. This raises the question whether in all circumstances, the optimal way to find a balance between the competing rights as stated above, is by suspending the examination of patent term extensions whilst there are pending applications.

RULING

Commissioner Ofir Alon accepts that the legislation allows the submission of multiple requests for patent term extensions for multiple parallel applications for the same medical formulation. He also accepts that the commissioner can suspend examination of the requests in appropriate cases.

Commissioner Ofir Alon does NOT accept the Applicant’s assertion that in re Novartis that in ALL CASES where there is a pending request for patent term extension based on a pending patent application, that all parallel applications for patent term extension be suspended. However, it is true that the legislation did formulate a suspension for patent term extension requests for pending applications.

64v(a) If a request for a patent term extension is applied for in accordance with the regulations by the appropriate party, the Commissioner should consider the request within sixty days of it being submitted.

(b) in accordance with that said in (a), if a request for a patent term extension is submitted before the basic patent issues, the request for the patent term extension will not be considered until the basis patent issues.

It is true that the law considers patent term extension requests for pending applications should be suspended until the patent issues, even if this is close to when such patents would lapse. In this manner, the Legislators showed that they considered it important to give applicants for patent term extensions the possibility to request these for pending applications, and that these would be considered, putting the Applicant’s interest first DESPITE the resulting lack of certainty.

However, this arrangement relates to the Examination of THAT same patent application. The law is silent with regards to other pending parallel applications, and does not clearly allow them to be suspended. Commissioner Alon does not see anything in the law as written, nor in the intent of the Law that warrants automatically suspending requests for patent term extensions whenever there is an issued patent and pending parallel patent applications.

In the explanatory notes of the 11th amendment (see the proposal for the 13th amendment of 2012, pages 792, 794 of 7 May 2015) it states:

The amendments that are suggested are intended to increase the certainty for both the drug manufacturing companies that are patent protected, and for generic manufacturers, by minimizing the number of countries that can be used as the basis for calculating the patent term extension in Israel, and by ruling as early as possible regarding requests for patent term extensions, thereby enabling the opening of the Israeli market to generic drugs as early as possible. In this manner there will be increased budgeting certainty for the country to plan for purchasing drugs and medical devices.

In the explanation of Section 64v(a) that states that examination should be within 60 days, similar things were considered:

The suggested amendment states that a request for a patent term extension should be examined as soon after filing as possible, and if it is submitted prior to the basic patent issuing, as soon after it issues as possible, to give the decision regarding whether or not to grant an extension as soon as possible, thereby increasing certainly regarding the period of protection for medical formulations and devices that are patent protected.

The legislators’ intention was to have requests for patent term extensions examined as early as possible. So automatically suspending requests indefinitely is, according to Commissioner Alon, NOT the intention of the legislation.

Commissioner Alon also believes that unless one suspends the request for a patent term extension for a patent that has already issued, it will prevent the intention of the Law which is to allow patent term extensions to eventually be considered for pending applications. The Applicant is able to choose that the patent term extension is applied to a pending application without suspending the request, however by so doing, the Applicant will have to give up on the patent term extension for the issued patent before an intention to grant the suspension is given.

certainty

The desire of the patentee to choose the Application when there is a state of certainty is clear and understood, and so the question regarding which patent will be extended from among the various patents for a certain active ingredient may be very important to the Applicant. However, one has to balance this interest of the Applicant with other interests, particularly the interest for clarity that the legislators were interested in obtaining.

This case demonstrates the complexity of this issue. The Applicant has five parallel patent applications where it is impossible to know when they will issue or be abandoned. The Applicant wishes to suspend the request for a Patent Term Extension for IL 203641 which has issued. It is expected that in a few months the pending divisional applications will issue, and then the Commissioner will have to consider suspending THEM until the final two applications also issue.

If an Opposition is submitted against one of the allowed patents, we can expect five requests for indefinite suspensions of the examination of the request for patent term extensions, until the opposition is concluded. In such circumstances, the public will remain in a state of uncertainty for many years as to which patent will finally be extended.

A main claim of the patentee is that anyway there is a long period of pendency under the 20 year rule before the patent would lapse and so there is no real damage or uncertainty by allowing the suspensions, regardless of which patent is finally extended.

logic

There is some logic to this claim. However, as explained above, the purpose of the 11th amendment was to increase certainty towards having the request considered as early as possible. The 11th amendment did not differentiate between patents that were close to lapsing and those that had a long pendency even without a patent term extension, and it could have done so. Thus in general, the period of when the patent would lapse is not in and of itself, a basis for allowing a suspension of the request or not, as Commissioner Alon ruled in re Farber.

Before concluding, the Commissioner related to the Applicant’s allegation that requests for patent term extensions were anyway uncertain things since the patent term extension had not yet been granted in any of the recognized countries, and so suspending the requests would not cause any damage.

This allegation cannot be accepted. As ruled in Section 64v(5) of the Law, the examination of a patent term extension should occur even before a patent term extension of the basic patent occurs in one of the (Bolar) countries offering a patent term extension, and if the application for a patent term extension fulfils the various conditions, a notice of intention to grant a patent term extension will be published under Section 64(v)(5)(1) of the Law, see the IMMUNEX ruling of 7 September 2015.

 

certainty

This means to say that the Legislators saw fitting to provide certainty to the public regarding patent term extensions, even where there is incomplete information regarding the future of the extension, such that the public would know which patent would be extended, even if the length of the extension was not yet known. See the Opposition to a patent term extension in IL 164147 Mapy Pharma ltd. vs. Celenge Corporation, from 18 January 2017.

uncertain

In light of the above, in the opinion of the Commissioner, the balance suggested above as used in re Novartis, is not unlimited, and should be applied sparingly, considering each case on its merits. Considerations that may be relevant for deciding whether or not to suspend examination of requests for patent extensions include the number of cases that would require being suspended, the time remaining before the patent lapses, the behavior of the Applicant during patent examination and opposition proceedings, the period of suspension requested and other parameters that come up in each specific case. This is necessary to balance between the conflicting interest of the patentee to select the case that he wishes to extend under conditions having as high a degree of certainty as possible, and the conflicting need to provide the public with certainty regarding which patent will be extended as the legislation requires.

Anyway, in the present instance, the Commissioner considers that the request to suspend the examination of the request for patent term extension is premature, since the Applicant has legal means to protect his rights by requesting extensions under Section 64ix(a1) of the Law.

At this stage, there are four co-pending applications that have not yet been allowed. As noted by the Applicant’s attorney in the hearing, the examination of these cases will soon be completed and the Applicant will know the scope of the allowed claims. By the end of the period for filing Oppositions, the Applicant will know if any oppositions are submitted against issued patents.

In light of the above, the Commissioner rules that at this stage, the examination of the request for a Patent Term Extension of IL 203461 should continue on schedule and, if the Applicant sees fit, he may request extensions for responding to any issues raised until he has sufficient data to request the Patent Term Extension on the most preferable application.

Ruling by Commissioner Ofer Alon concerning Patent Term Extension of IL 203541 to Millennium, (suspension of examination) 15 February 2018. 

COMMENT

ofir-alon

This is the second ruling of the new Commissioner Ofir Alon concerning the tricky, controversial, highly litigated area of patent term extensions. In his first ruling, the Commissioner creatively interpreted the Law to express what he considered to be its intent and seemed to favor the patentee. In this second ruling, he has turned down a request from the patentee, but left enough wiggle room to provide no general guidance on how he will rule in other cases where similar issues comes up. In ex-partes decisions, the generic drug development companies such as Teva and Unipharm have no standing, but eventually these issues become inter-partes and it is not likely that patent term extensions that are substantially effected by a ruling will end up in court. We wait to see what happens.


Israel Supreme Court Affirms Suspension of Israel Patent Attorney

March 26, 2018

Zuta

In Appeal 3524-02-17, Judge Avrahami of the District Court of Tel Aviv Jaffa partially accepted an Appeal by Mark Zuta and ruled that though guilty under Section 146 of the Israel Patent Law 1967, he would only be suspended from practicing as a Patent Attorney for two years instead of three. Marc Zuta then requested to appeal this ruling to the Supreme Court.

This is a summary of the proceedings that led to the current request.

Mark Zuta has represented himself throughout these proceedings. He is a Patent Attorney by profession. In 2008, H.H. Azikri approached him and engaged his services to register some designs and a trademark application. However, the client claims that, due to his negligence, their applications were abandoned, which caused them damage. Following this, the client sued Zuta in the Small Claims Court and then filed a complaint against him before the Ethics Committee under Section 146 of the Israel Patent Law. The complainants alleged that, despite having been awarded judgment in the Small Claims Court, they were unsuccessful in enforcing the ruling as the defendant was avoiding them.

The Ethics Committee [MF – Arnan Gavrieli, Michal Hackmey and Stanford T. Colb] gave their decision on 16 October 2012, and found that the Appellant had taken no steps and had not reported Office Actions from the Patent Office to the client that warned that the prosecution should be completed within 14 days, or the applications would be considered abandoned. The Committee found that the cases (design application numbers 46916 and 46918 for a head support cushion and for a nursing cushion, and Israel TM Application No. 217162 which is shown alongside) were abandoned due to his inaction. The abandonment of the design applications was final and irreversible.

217162

A similar situation occurred with respect to the trademark application which resulted in these being struck from the register. However, unlike design applications, trademark applications may be refiled, and Hadas Azikri did this after learning that the marks were struck from the register, expressly cancelling the POA to Zuta.

The Ethics Committee held two hearings, during which they found that the Appellant ‘was not careful to always state the truth’ and that ‘his office management was particularly lacking’. The Committee ruled that the Appellant had not acted properly in that he had failed to inform the complainants regarding the statutory design timetable and had failed to report the Office Actions to the client, and had failed to act to save the design applications and prevent them from lapsing, and had not kept records of the trademark application. The Appellant’s actions could be summed up as “irresponsible in fulfilling his obligations as a patent attorney” in contravention to section 148(a)(3) of the Patent Law. The Ethics Committee ruled that the Appellant could not practice as a patent attorney for three years.

Zuta appealed to the Tel Aviv & Jaffa District Court, and the case was returned to the Ethics Committee with Zuta being given a proper opportunity to cross-examine the witnesses, the District Court not opining on whether or not he was guilty of misconduct (Ruling by Judge Shitzer, Appeal 25906-11-12 from 4 March 2016).

The Ethics Committee reconvened, with former Commissioner [MF – and before that, a Patent Attorney in private practice as a sole practitioner] Dr Meir Noam replacing Adv. Arnan Gavrieli who had since passed away. On 19 January 2017, the Committee gave its ruling and stated that Marc Zuta gave the impression of not being believable, whereas the complainants, who appeared believable, being ignorant of IP law, had engaged a professional to help them register their designs and trademark. Various allegations from the Appellant, such that Mr Zikri was an ‘imposter’ claims against the Committee that they had rejected witnesses and various claims that he had not been able to cross-examine witnesses, were rejected.

The Committee added to their decision that they considered the behavior of the Appellant as inappropriate for that of a Patent Attorney summoned before the Ethics Committee. Inter alia, they noted that the Appellant had failed to respond to questions from the Ethics Committee under the alleged technical justification that the period for questioning him had passed with the first round before the committee; that the Appellant had delayed and tried to freeze the hearing; ignored instructions from the committee and ‘warned the complainants’ contrary to the instructions of the Committee. In summary, the Ethics Committee reconsidered and left the three-year suspension in place.

Zuta appealed this second Ethics Committee ruling, raising various objections. Judge Abrahami then wrote a wide and detailed ruling dismissing Zuta’s claims one by one and also criticized Zuta’s behavior. He dismissed Zuta’s claim that Azikri pretended to be a client; that the Committee failed to inform him of the complaint against him as legally obliged to; that he was bankrupt and the Committee ruling required court authorization that he was bankrupt; that he was not provided an opportunity to cross-examine the witnesses; various complaints against the Committee, including the charge that the Committee was in conflict in that it consisted of his fellow Patent Attorneys who were his competitors.

The court upheld the significant criticisms against the Appellant serving as a Patent Attorney, and criticized his behavior before the Ethics Committee, including his behavior with respect to the witnesses and to the Committee, behavior that gives rise to “uncomfortableness, to put it mildly”, as the District Court put it.

The District Court explained the responsibilities of a Patent Attorney, and noted that the Attorney in question refused to acknowledge that his behavior was flawed. Despite this, the District Court saw fit to shorten the suspension from three years, taking into account the age of the practitioner who was apparently born in 1951.

Marc Zuta submitted a Discretionary Appeal to the Supreme Court.

The Appellant, who was not represented, raised a host of allegations, including the claim that the issuance of two ‘conflicting’ rules shows that there is a legal issue that requires clarification; and whether his appeal to the District Court should have been considered a civil or criminal matter, that the Disciplinary Counsel misunderstood the evidence that the Disciplinary Committee has no authority to decide whether evidence is reliable or not, and that his client was Mrs Azikri and not her husband. The Appellant alleges that his appeal to the Supreme Court fulfils the criteria for a Discretionary Appeal  in a ”court of third instance”, particularly since the two rulings were contradictory and the first court ruling “cancels” the decision of the Disciplinary Committee, both the first ruling, and the second ruling given afterwards.

Judge Amit ruled that the request for a Discretionary Appeal should be rejected without requiring comment. He went on to add:

As the Appellant notes, the Appeal is a Discretionary Appeal in a court of third instance and so has to fulfill the standard set in Appeal 103/82 Haifa Parking Lot vs. Mazat Or, (Hadar Haifa) p.d. 36(3) 123 (1982), under which permission for a further appeal is only given in cases where there is a legal issue or one of public importance that goes further than the interests of the Appellant. See for example, the decision of Deputy President Amnon Rubinstein in Discretionary Appeal 4252/16 Algeli vs. The Civil Service 12, 5 July 2016 which relates to the right of appeal to the Supreme Court of District Court rulings on appeal of decisions by the tribunal for proper behavior of civil servants. See also the ruling of (then) Judge Meltzer concerning the Discretionary Appeal 3553/10 Abad El Salam vs. The Minister of Health of the State of Israel from 25 January 2011 which considered the Discretionary Appeal  of a District Court ruling on Appeal concerning a decision of the Ethics Committee of the Dentists’ Ordinance, and in contrast, the request for Discretionary Appeal  in a fourth instance concerning 1958/09 Berry vs. The Tel Aviv District Committee of the Israel Bar, decision 7, 10 May 2009.

The current request for Discretionary Appeal does not fulfill the criteria of cases where such an appeal was allowed. As noted by the District Court, there have only been rare complaints against Patent Attorneys, and the Ethics Committee has only convened a handful of times (section 38 of the second court ruling). Even if Judge Amit were to assume, as the Appellant alleges, that his case was the first time that a Patent Attorney Ethics Committee ruling was appealed to the District Court, that is not enough to make this case exceptional and warranting consideration by a third court and as extending beyond the interests of the parties.

The Appellant’s allegation that there is a ‘conflict’ between the first and second rulings, and that this raises legal issues is baseless. The first ruling only considered whether the Appellant had the opportunity to cross-examine the plaintiffs.  That decision ensured that the Appellant had the right to defend himself, and the court noted that the referral of the case back to the Committee was not an indication that their findings were wrong. There is nothing in the first ruling to indicate that the first decision of the Committee was in any way wrong, and, despite the Appellant’s assertions, there is absolutely nothing in it that can be used as the basis for voiding a future decision that was given later.

The Appellant’s question of whether the District Court should have considered the case under civil or criminal law should also be rejected. Firstly, had the Appellant considered that a criminal proceeding against himself was in order, he should have raised that issue with the District Court and not raised it for the first time before the Supreme Court. That as may be, the claim is baseless. Appeals of professional tribunals are not considered as criminal appeals, and in Discretionary Appeal 3553/10 Abad El Salam vs. The Minister of Health of the State of Israel from 25 January 2011 Judge Meltzer specifically ruled that the Appeal was a Discretionary Civil Appeal, and both Section 51 of the Dentist’s Ordinance and Section 149 of the Israel Patent Law use the same language, regarding the right of appeal.

As to the other quibbles such as the identity of the client, and that the Committee was not interested in his practicing as he was bankrupt, this is a case-specific detail that does not justify allowing a second appeal.

At the end of his appeal, the Appellant complains about the seriousness of the punishment. Whilst this can adversely affect his income, this is not grounds for granting a second appeal. As ruled more than once, the Supreme Court will not reconsider appeals against Ethics Committees, except in instances where the punishment is significantly different from the norm, where there is a judgmental flaw or where the punishment clearly misses its intent. (See re Salim paragraph 8 and references there). Judge Amit is not convinced that the current instance falls in this category. Both the Ethics Committee and the District Court noted that the Appellant acted problematically and leaves an untrustworthy impression, that he mismanages his office and has neither regretted nor internalized the seriousness of his actions. It is also worth noting that the District Court did consider the seriousness of the punishment and shortened it, acting with clemency and leniency like the School of Hillel [MF – In late Second Temple times, there were two schools of religious thought: the School of Hillel and the School of Shammai. The School of Hillel was known for its more lenient approach to Jewish Law]. In the circumstances, it is not appropriate to allow a further appeal.

As an afterthought, Judge Amit raises the issue of whether Patent Attorneys who are bankrupt should be able to practice, since the Code of Ethics for Lawyers Section 48(3) prevents bankrupt lawyers from practicing.

The Appeal is rejected and Marc Zuta has to pay 3000 Shekels costs.

Ruling by Judge Amit of the Supreme Court refusing to Reconsider the Appeal by Marc Zuta of the District Court’s ruling on Appeal of the Sanction imposed by the Ethics Committee, 22 March 2018.     

COMMENTS

It seems reasonable that a Patent Attorney who is the subject of an official complaint (or his legal representative) be able to cross-examine the complainant(s).  The first Appeal was justified. The second was not. Nor was the request for Discretionary Appeal.

I take a dim view of Patent Attorneys or indeed Attorneys-at-Law representing themselves in court. However, I suspect that proper legal counsel could have raised some interesting and valid legal points that require clarification. However, according to the second District Court ruling, Marc Zuta was born in 1951, so is now 69. He has successfully postponed his suspension by six years. Had he been successful in having his Appeal heard by the District Court instead of dismissed, he could have carried on practicing for another few years, and has achieved this without the expense of professional counsel, which, if bankrupt, he may be unable to afford.

stamp.322100034_std

Marc Zuta describes himself as a Patent Expert on his website. He also awarded himself a medal. He claims to be able search provisional patents for free, whereas I do not believe that provisional patents are searchable as they are not published (unless relied upon in a regular patent application). He also claims to be ‘the leader in Israel in Scientific patenting, using High-Tech Patentics (patents pending)’. However, this is NOT patent pending. The patent application published as US2009063427 but was abandoned in the US in 2011 and he lost on Appeal in the UK. (We note that Marc Zuta does have other, issued patents to his name).

Perhaps, most oddly, in the section titled About Us, Zuta announces Michael Ophir, a former Patent Commissioner as being of counsel. Whilst he does note that this is In Memory, he uses the term ‘has been working’ and ‘has’ when describing Ophir’s qualifications, which implies that he is still with us. Former Commissioner Michael Ophir (Martin Oppenheimer) passed away in 2012. As far as I recall, after retiring from the Patent Office, Michael Ophir was of counsel to Colb. He may have given some advice to Marc Zuta as well but, despite his 25 years in the Israel Patent Office and his about a 1000 decisions, of which only three were overturned by the Supreme Court, one assumes that over the past six years at least, he has not been a resource that Zuta could draw on.

The six-year delay due to these appeals, during which Zuta has continued to practice is a travesty. As of today, on his websites he describes himself as being an expert Patent Attorney and he claims to be licensed. Indeed, he claims to be Examiner of Patent Attorneys by appointment of the Minister of Justice and an expert consultant to the Government and District Court.

Judge Amit raises the issue of whether Patent Attorneys who are bankrupt should be able to practice, since the Code of Ethics for Lawyers prevents bankrupt lawyers from practicing. This implies that he considers that the Code of Ethics for the two professions should be similar.  Despite believing that the proposed Code of Ethics for Patent Attorneys should include provisions to ensure ongoing training, I do not believe that the outdated code for Attorneys-at-Law is the correct model to adopt. However, preventing bankrupt practitioners from practicing seems reasonable as Patent Attorneys are responsible for handling international patent budgets, and their associates and clients are entitled to assume that there is no evidence of the legal representative having shown the inability to handle finances responsibly.  Arguably, however, bankrupt Attorneys (Legal and Patent Attorneys) should be allowed to practice if they inform clients of their financial situation. That way clients would not pay up front and might pay associates directly, but the Attorney would have a chance to work off his debts.

There are legitimate criticisms that can be raised against self-regulation of any industry including that of Patent Attorneys. Indeed some criticisms have been raised against the examination committees that issue the exams for qualifying as an Israel Patent Agent. However, I note that licensed Patent Attorneys do need to have trained for at least two years under licensed Patent Attorneys having at least three years post qualifying, and to have passed written oral exams.  Licensed practitioners are regulated to the extent that they can be sued, need professional insurance to be able to pay for mistakes that can and do occur, and can lose their licenses.

Flywheel_BBC

I firmly support regulating the IP Profession. My thoughts may be found here. My problem is that in addition to licensed Patent Attorneys who could lose their license, there are a bunch of non-qualified practitioners who also award themselves titles such as ‘expert’ that provide services for which they are not licensed. I have discovered such cowboy firms as being the address of record with the Israel Patent Office. We also have a bunch of US patent and law firms practicing IP in Israel. Some of these use advertizing tools that are against the Code of Ethics of the Israel Bar which they are formally obliged to follow. Non-licensed practitioners in Israel may also be formally bankrupt.  In my opinion, enforcing a suspension against a licensed practitioner who has been negligent is reasonable if non-licensed practitioners are also disciplinable in a similar manner. Otherwise, this is simply discrimination against those that are qualified.

Some additional thoughts:

Over the years, just about every firm of Patent Attorneys has missed deadlines, including non-extendible deadlines. See hereherehere and here for some examples. I also have examples of the Israel Patent Office having misfiled papers sent to it. Mistakes do happen. Whether or not the firm is large or small, uses manual docketing or computer docketing, mistakes happen. That does not mean that they are acceptable. However, I expect many of my peers on reading this post are thanking their lucky stars that when they missed a deadline, their clients accepted their apologies and a refund or whatever, and did not complain to the Ethics Committee. It is possible that in this case, the Attorney did not take responsibility and that resulted in him being sued and a complaint being filed to the Ethics Committee. If he failed to show remorse and take responsibility, this could have triggered the Ethics Committee imposing a rather stiff sentence.

The report above is essentially a verbatim translation of the Supreme Court ruling, with a couple of added details, such as the application numbers and the goods in question. From reading the District Court decision, it appears that Marc Zuta could have paid back the filing fees and avoided being sued, and could have paid back the money after losing in the Small Claims Court and then no complaint would have been submitted against him.

In the Ruling of the District Court it seems that Marc Zuta complained that the Ethics Committee did not keep the matter confidential. I find that wholly believable. In my early days of blogging, I wrote something that Dr Meir Noam, as Commissioner, considered was disrespectful of the Israel Patent Office and he notified one of the members of the Committee who spoke to me, I apologized to Dr Noam, and since then have been more careful. The committee member handled the incident with reasonable sensitivity and care, but at a convention abroad a few weeks later, one of her work colleagues, who was not a member of the committee, mentioned the case to me. She had evidently discussed it with her colleagues which was unethical and wrong.

Most correspondence nowadays is by email and so generally Patent Attorneys have full records of reporting Office Actions to clients. Clients do, however, sometimes deny having received communications. Indeed, amongst those looking for IP services, there are a number of eccentrics. Once one has started to help someone in this category, it may be difficult to terminate the relationship. On one occasion, I was asked by an existing client to help a couple who needed a patent filed that same day. They paid up front, so I took their disclosure and claims, printed it out (back in the day when submissions were on paper) and added a few additional claims on my own initiative, filed, obtained a filing date and number and went back to them with the filing certificate.  I then heard some interesting conspiracy theories involving foreign agents trying to steal their invention. I told them that I had added some claims which I felt was justified and necessary, but could remove them at no additional charge, but would need them to sign the Power of Attorney which I gave them. Their response was that because of my initiative which could cause untold damage, I no longer represented them. I told them that I would happily transfer the address-of -record to them or to a different Attorney, however I needed them to sign a Power of Attorney to be able to do anything. Instead of signing the POA, the couple decided to go to the Patent Office themselves, spoke to an Examiner and then told me that they had sorted everything out, and I no longer represented them. I told them that despite their efforts, I expected that the Notice Prior to Examination would be sent to me, as I remained the address of record until a fee was paid for changing this. They subsequently requested that I withdraw the application.  However, as I explained to them, I could not do so without a Power of Attorney. I was in limbo, They wrote a letter to the Patent Office, copied to me, withdrawing the Application and ordering the Patent Office not to send me anything. Nevertheless, as I remained the Agent-of-Record, I wasted a lot of time forwarding the Notice Prior to Examination, and then the Notice of Abandonment. None of their direct actions had any effect, and there was nothing I could do without a POA, apart from forwarding the documents and trying to explain why I remained the address of record.

Clients sometimes ignore deadlines and reminders as the application is no longer of interest and/or they have run out of funding, and then a couple of years later, when suddenly there is some interest again, perhaps because of discovering an alleged infringer or something, the client blames the attorney for their case lapsing.

As with all court rulings, I can only report the findings of the court. I have linked to the District Court ruling and that of the Supreme Court. I do not know if, in this instance, the Attorney-of-record was indeed derelict in his duty.  If, however, he did receive three separate letters referring to three separate cases and failed to pass them on, this is inexcusable.


A Fresh Trademark Opposition Costs Ruling

March 23, 2018

be fresh

On 14 April 2015, Benny Pauza Sumum (2009) ltd. submitted Israel trademark application no. 273816 in classes 32 and 33 for Be Fresh, as shown. The mark was allowed on 4 May 2017 and published for opposition purposes. On 27 July 2017, a Turkish company called Cakiemelikoglu Maden Suyu Isletmesi Sanay Ve Ticaret Anonim Sirketi filed an opposition against the class 32 registration. On 27 September 2018 the Applicant filed a counter-statement of case. The Opposer chose not to file their evidence and on 1 January 2018, the agent-of-record of the Applicant approached the Opposer directly. In the absence of a response, three weeks later, the Applicant requested that the Opposition be rejected and that costs be awarded.

Ruling

Under Section 38 of the Israel Trademark Ordinance 1940, the Opposer should have filed their evidence by 28 September 2017. Until now, the Opposer has failed to submit evidence in an Opposition proceeding they themselves initiated. Consequently, under Section 39, the Opposer is considered as a party that abandoned a legal proceeding that they themselves initiated.

If the Opposer does not submit evidence, he is considered as having abandoned the Opposition unless the Commissioner rules otherwise.

In this instance, the Applicant requested real costs of 21,060 Shekels including VAT for filing the counter Statement-of-Case and also for filing the request to close the file. The request was accompanied by a tax invoice showing that the charges were indeed incurred.

It is true that the winning side is entitled to real costs, i.e. those actually incurred. However, the Arbitrator is not required to award the costs incurred, and should consider the circumstances and legal policy. See Appeal 6793/08 Luar ltd vs. Meshulam Levinstein Engineering and Sub-contracting ltd, 28 June 2009, and particularly section 19 thereof.

The case-law requires the party requesting costs to show that they are reasonable, proportional and necessary for conducting the proceedings in the specific circumstances. See Bagatz 891/05 Tnuva Cooperative et al. vs. The Authority for Import and Export Licenses at the Dept of Industry, 30 June 2005, p.d. 60(1) 600, 615. The purpose of the reasonable, proportional and necessary limitation is:

To prevent a situation where the costs are so high that they will discourage parties from filing suit, create a lack of equality before the law and make litigation too expensive to enable access to the judiciary. (Appeal 2617/00 Kinneret Quarries Partnership vs. the Municipal Committee for Planning and Construction, Nazareth Elite, p.d. 60(1) 600 (2005) paragraph 20).

The amount of work invested in the proceeding and in the preparation of legal submissions, the legal and factual complexity of the case, the stage reached, the parties behavior to each other and to the court and any inequitable behavior are all taken into account in the ‘specifics of the case’.

The reasonableness of actual costs was considered in Re Tnuva on page 18 paragraph 24, and it was ruled that where an issue is significant to a party it is reasonable for him to invest more heavily in the legal proceedings and doing so is likely to be considered reasonable.

That said, the more a cost claim appears exaggerated, the more evidence is required to substantiate it. See for example, the Opposition to IL 153109 Unipharm vs. Merck Sharp & Dohme Corp, cost request paragraph 9, 29 March 2011. 

Section 69 of the Trademark Ordinance 1972 states that:

In all hearings before the Commissioner, the Commissioner is entitled to award costs he considers as reasonable.

The Court of the Patent and Trademark Authority has previously ruled that simply submitting a copy of an invoice is insufficient. The requester for costs should detail the actions performed, and why they were reasonable, and similarly for the other parameters detailed in re Tnuva. From the submission it is apparent that the Applicant has not submitted sufficient evidence to support the cost claim to justify it. Consequently the Adjudicator Ms Shoshani Caspi estimates appropriate costs for the work involved.

In this case the mark holder had to file a counter-statement-of-case and a costs request. The case does not appear to be particularly complicated and the Applicant did not have to file evidence since the case was abandoned. Nevertheless, the Opposer initiated and then abandoned the procedure and didn’t even bother telling the Patent Office that they had done so.

After humming and hawing detailed consideration and by her authority under Section 69 of the Ordinance, the Adjudicator ruled that 4500 NIS + VAT was appropriate and gave the Opposer 14 days to pay this, or to incur interest.

Opposition to Israel trademark no. 273816  “Be Fresh”, cost ruling by Ms Shoshani Caspi, 21 February 2018


Reinstatement of Lapsed Patents in Israel

March 22, 2018

not a rubber stamp

It can and does happen that annuities are inadvertently not paid and patents go abandoned.

If the patentee and/or his representative act promptly on learning that a patent lapsed, and sign affidavits to explain how the deadline was missed, reinstatement is generally possible. The Adjudicator, typically the Deputy Commissioner, will usually allow reinstatement and her decision publishes for opposition purposes. If, in the meantime, a third-party has made preparations to exploit the apparently abandoned patent, they are generally entitled to a non-transferrable license to continue to exploit. It is important to realize however, that reinstatement is NOT automatic.

This past month there were six rulings concerning abandoned patents. In five cases, in two of which the patentee was represented and in three they were not, the Deputy Commissioner ruled that the conditions of Section 56 were met and ruled that, subject to no oppositions being submitted, the patents could be reinstated.

In the sixth case, IL 177416 to Arieh Sansolo titled “Rapid Detonating Cord Coil Deployment Apparatus” went abandoned due to failure to pay the third renewal for years 10-14 after filing. The last day for paying this renewal was 10 August 2016, and six months later, on expiry of the grace period, the patent was abandoned as per Section 57 of the Law.  The fact that the patent was abandoned was published in the March 2017 journal.

From the request for reinstatement and the accompanying affidavit, it seems that the reason why the case was not renewed was due to the patentee not being reminded by the agent-of-record (Dekel Patents).

In her ruling of 7 February 2018, Ms Bracha wrote:

It is not clear from the Affidavit why the agent-of-record did not inform the patentee, nor is it clear what steps were taken by the agent-of-record to ensure that the renewal fee be paid. It is also not clear how and when the patentee and the agent-of-record became aware that the patent had lapsed

Ms Bracha gave the patentee a further opportunity to add the missing data within 7 days.

 

up a palm tree

The patentee and legal representative did file an additional submission which attempted to include testimony from both patentee and agent -of-record wherein the patentee swore to tell the truth, but the agent -of-record merely listed the circumstances without swearing to tell the truth.  Nevertheless, without relating to the formal deficiencies, Ms Bracha considered the statement. The agent -of-record noted that he assisted the patentee by receiving reminders and forwarding them to the patentee. In this instance, he did not receive a reminder and thus did not forward it to the client. The agent -of-record noted that he does not charge for this service.

In a string of decisions the Israel Patent Office has ruled that not receiving a reminder from the Patent Office is not sufficient justification to not pay the renewal. See for example, IL 185526 Khalid Akad et al. 24 October 2012. The Applicant or his representative are required to take positive steps to ensure that renewals are timely paid, such as to run a computerized reminder system or to use a renewals company.

In this instance the patentee and the agent -of-record did not have such a system but simply relied on the Patent Office. This is insufficient to fulfill the reasonable means requirement of Section 60 of the Law.

Furthermore, in this instance, the Patent Office records show that an email reminder was sent to the agent -of-record on 10 April 2016 and shows up in the Patent Office system.

It is noted that providing a renewal service without charge is insufficient to free the agent -of-record from his obligations under the law.

The request for reinstatement is refused, but the Applicant has 30 days to submit a request for a hearing.

Re Reinstatement of IL 177416 – Decision by Ms Bracha, 11 February 2018.

COMMENT

Whilst Ms Bracha is correct that the patentee and agent-of-record are obliged to docket and track renewals, things can and do go wrong. Now the Patent Office is obliged to weigh the public interest against that of the patentee and there is, indeed, a six months’ grace-period. The fact that this month there were six cases of patents that unintentionally lapsed shows that this does happen. What I would like to humbly suggest is that the Patent Office takes it upon itself to send out a further reminder or preferably two; one when the deadline for renewal passes and one a month before the end of the grace-period. The Patent Office is equipped to do this automatically without human involvement. Doing so would increase Patent Office revenues and minimize the amount of time that the Commissioner and his staff have to deal with reinstatement issues.

issues.


Adding Evidence After Filing Statement of Case in Patent Opposition Proceeding

March 22, 2018

Plasto Vak ltd (1990) ltd filed Israel Patent No. 220639 titled “Disposable One Piece Container with a Removable Tear Strip Configured for Separation of the Lid and as a Tampering Alert.” On allowance, Vacotec Packaging ltd filed an Opposition.

lateBoth sides filed their statement of case, and then, at the evidence stage, Vacotec applied to reference two additional pieces of prior art. The Opposer justified the need to add these citations by arguing that the Applicant had taken an unexpected position in their Statement of Case and had post-dated the filing date due to amendments during the prosecution.  This resulted in them doing a further search and discovering the two additional references.

The Applicant , Plasto-Vak ltd denies that there was a change between the position they took during the prosecution and that taken during the Opposition in how the claimed invention overcomes the prior art. They further deny that they agreed to the application being post-dated due to significant amendments and argue that it is too late for Vacotec to file amend their Statement of Case.  They noted that they had submitted their statement of case 5 months earlier, and this request by Vacotec was tardy. Finally, Plasto-Vak ltd denies that the new citations are relevant enough to challenge the patentability of the claimed invention.

The invention in question is a disposable one-piece container. It is claimed as follows:

A disposable one-piece container [100] comprising first and second opposing sections [110 and 120], respectively, interconnected by a folding joint [130], said first and second sections [110 and 120] are separable by pulling said second sections [110 and 120] in opposite directions; wherein said folding joint [130] comprises an axis-segment [230] formed by a folding-line [210] adjacent to the second section [120] of said container [100] and a frangible folding-line [220] adjacent to first section [110] of said container [100]; said axis-segment [230] configured as a rotation axis between said two opposing sections [110,120] enabling the closure of said container [100]; further wherein said container [100] comprises a hold-tab [150] located at the first section [110] adjacently to frangible folding-line [220] and a hold-tab [160] located at said axis-segment [230] adjacently to frangible folding-line [220] and spaced apart from said second section [120]; said hold-tabs [150 and 160] are perpendicular to each other and grippable by a user for pulling in opposite directions.

The Application was submitted on 25 june 2012 and the examination was expedited. It published for opposition purposes on 30 November 2016 and the opposition was filed on 27 February 2017.

Discussion

The Applicant is correct that in general in opposition proceedings, the Opposer cannot rely on additional citations beyond those brought in the statement of case. Consequently, submission of additional references requires correcting the statement of case. See Appeal 47387-01-11 Bromium Compounds vs. Alvemarle Corporation USA 8 August 2011 and the IL 155919 Teva vs. AstraZeneca opposition from 5 December 2011.

Amendments to the statement-of-case are allowed where they help focus the discussion on points of disagreement between the parties, where there is no justification to prohibit the correction. See Opposition to IL 187923 Pimi Aggro Cleantech ltd vs Xena international 19 May 2013:

This forum has the authority to allow corrections to the Statement of Case in instances where the amendment focuses on the issues in question and where there are no reasons not to allow the amendment. Such reasons for refusing to allow the amendment include inequitable behaviour, denying the opposing party their rights in a way that may not be compensated for with monetary award in a costs ruling for the interim action, and tardiness in requesting the amendment (see interim request to amend the statement of case in cancellation proceedings against IL 154398 in Logo Engineering Development vs. State of Israel, Ministry of Agriculture, Volcani Institute 29 April 2004. Furthermore, exercising the authority to allow such amendments depends on the stage of the proceedings reached, since patent oppositions delay and prevent the Applicant from receiving the patent.

In this instance, there does not seem to be any real reason not to allow the amendment to the statement of case and the addition of these references since the Applicant can respond to the amended statement of case. The Opposer claims that their evidence is ready and can be submitted within a week so that no real delay will result from allowing the additional material to be submitted.

Two issues that the Applicant raises deserve responding to:

  1. The delay in filing the request
  2. The relevance of the new citations

It is preferable to conduct a proper search before filing the Statement of Case, and not have to subsequently amend it at the evidence stage. The Opposer claims that the search was based on the Applicant’s position as stated in the meeting with the Examiner and this resulted in the need to conduct a further search after receiving the Applicant’s statement of case.

In the prosecution, the Applicant claimed that the main difference between the applied for invention and the prior art in that the tabs are very close to the fold line.

“In response to the office action issued on 17.02.16, the applicant respectfully submits the following:

In item 1a of the office action, the examiner states that D1 discloses the present invention. The applicant interprets that the present invention is rejected as not novel. Meanwhile, the tabs functionally directed to separating upper and lower parts of the container are located in the positions absolutely different in comparison with the prior art document. Specifically, they are adjacent to the fragile folding line while, in D1, are located distantly. This limitation is the main discriminating constructive feature regardless of a material of the container.

…”

The Opposer submits that the Applicant is now claiming that there are additional differences that claim patentability due to other features as raised in the meeting.

To show that a claimed invention is anticipated, one has to find a piece of prior art that relates to all the features of claimed.  The claims are interpreted in light of the specification, and one cannot import features not described in the specification:

The correct interpretation is that terms in the claims should be interpreted in light of the specification to give them the meaning intended by the inventor. This can be narrow or broad, so long as the interpretation is anchored in the specification and is clear to persons of the art.

However one should differentiate between the ways that one can widen and clarify the monopoly and how one understands the invention. One can refer to the specification to understand the monopoly but that not claimed is not part of the monopoly. See Appeal  345/87 Hughes Aircraft Co. vs state of Israel et al. p.d. 44(4) 45, 70.

So even where the Applicant stresses one or other element in the claims or in the rest of the application during the examination or in the statement of claims, since the claims themselves were not amended in the opposition, the Opposer knew what the claimed elements to be searched were.  (this is not to be understood as license to ignore that claimed during the patent examination).

Nevertheless, the resulting delay is not serious enough to warrant forbidding the correction of the statement of case and the addition of the two new references and allowing it will not drag out the opposition. To the extent that the Opposer could have found these new citations 10 months ago, the damage to the Applicant by the resulting tardiness may be compensated for by awarding costs to the Applicant.

As to the alleged lack of relevancy of the new citations, there is no clear a priori basis to exclude the possibility that these publications are relevant to the patentability. The Applicant submitted a 23 paragraph statement to try to show why these citations are not relevant and so it seems reasonable to accept the possibility that the citations are relevant and to relate to them substantively in the Opposition proceedings instead of to prevent their being submitted.

In light of the above, Ms Jacqueline Bracha allows the statement of case to be amended to relate to the two additional citations as follows:

  1. The corrected statement of case and additional evidence must be filed within 7 days
  2. The applicant will file their statement of case and evidence within the following three months as per section 59(b) of the Regulations
  3. The Opposer will pay 5000 Shekels including VAT costs to the Applicant

 Re IL 220639 to Plasto Vak ltd (1990) ltd; Interim ruling by Ms Bracha on addition of Evidence not referenced in Statement of Case, 21 February 2018


“Think Different” and “Tick Different” –

March 21, 2018

Tick different

Apple Inc filed Israel trademark no. 284172 for the slogan “Think Different” in classes 14, 28, 35, 36, 41 and 42.

Then Swatch AG filed Israel Trademark Nos. 281116 and 281332 for “Tick Different” in classes 9 and 14.

Now “think” and “tick” mean totally different things, but visually, the marks have a similarity, in that they both start with a t, have an I in the middle, and end with a k. The Israel Trademark Examiner saw a likelihood of confusion for fashion conscious illiterates or those whose mother tongue is not English, and instituted a competing marks procedure.

Apple’s slogan ‘think different’ dates back to 1997 and was a response by Steve Jobs to IBM’s “Think” campaign, and they already have a registered mark no. 266923 for “Think Different” in class 9. Consequently, in an Office Action Swatch’s marks were refused to under Section 11(9) of the Ordinance.

On 1 November 2017, Apple requested that the competing marks procedure be suspended until if and when Swatch managed to overcome the Section 11(9) objection.

Think different

Apple claims to be one of the leading technology companies in the world. They allege that the “Think Different” campaign should be considered a “well-known mark” under the relevant section of the Ordinance, and is thus entitled to wide protection against marks, seen in different classes, and Swatch’s Tick Different is confusingly similar thereto. Furthermore, Swatch’s application was rejected under Section 11(9) of the Ordinance in light of Apple’s registered mark. Apple considers the Angel Bakery vs. Shlomo Angel Patisserie LTD from 2016 as a relevant precedent. In that case, there was a competing marks proceeding in parallel with formal examination based on earlier registered marks and former Commissioner Asa Kling suspended the Competing Marks proceeding whilst examining the registerability of one mark based on previously registered marks. In this instance as well, Apple argues that it is ridiculous to have to fight a competing marks proceeding, where, if Swatch were to win, they would in all probability not be able to register their mark in light of the previously registered Apple mark.

swatch

On 4 February 2018 Swatch responded, claiming that the competing marks procedure should NOT be suspended since unlike the Angel’s case, Think Different should not prevent Tick Different from being registered. Reasons given included that Apple was not using Think Different in Class 9, and because the marks were not confusingly similar phonetically or visually, and anyway Class 9 (Computers, Software, Electronic instruments, & Scientific appliances) and Class 14 (precious metals and their alloys and goods in precious metals or coated therewith, hierological and chronometric instruments).

Swatch considers that a competing marks procedure is necessary to decide which mark takes precedence. Swatch considers that the Commissioner is obliged to conduct a competing marks procedure if there are pending marks to two applicants that are confusingly similar and the parties are unable to agree to coexist, and this should occur prior to examination of the a priori registerability of either mark. The Angel’s case is different since in this instance, the list of goods to be protected by the mark is different for the two applicants.

ON 14 February 2018, Apple responded that they were using the Think Different mark, the two marks were undeniably similar and the Angel case is very relevant. Furthermore, as far as competing marks is concerned, it is irrelevant if the applied for marks are in the same category or not.

RULING

Section 29(a) is the proceeding that decides which of competing marks takes precedent:

Where separate applications are made by different persons to be registered as proprietors respectively of identical, or similar to a misleading degree, trademarks in respect of the same goods or goods of the same trade description, and the later application was filed before the acceptance of the prior application, the Registrar may refrain from accepting the applications until their respective rights have been determined by agreement between them approved by the Registrar. In the absence of such agreement or approval, the Registrar shall decide, for reasons which shall be recorded, which application shall continue to be processed pursuant to the provisions of this Ordinance.

Where the Commissioner uses his Section 29(a) discretionary power, there are two applicants that use the same or very similar marks. In such circumstances, the Section 29a ruling will cancel the rights of one of the parties to use the mark where, were it not for the competing mark, both applicants would be able to use their marks. Thus it is the second application that might make the mark non-registerable and effectively both parties attempt to prevent the other from continuing to use a mark.

In a long list of decisions and rulings, the Trademark Office considers the following:

  1. Who filed first?
  2. The extent of usage, and
  3. Issues of bad faith in selecting the mark.

See for example, Appeal 11188/03 Contact Linsen Israel ltd vs. Commissioner of Patents & Trademarks (5 May 2005) and Appeal 878/04 Yotvata ltd. vs. Tnuva Cooperative 4 March 2007 and Appeal 8987/05 Yehuda Malchi vs. Sabon Shel Paam (2000) ltd.

As a rule, in the Competing Marks procedure, the issue of registerability over existing marks is not considered, and there is an assumption that both marks are registerable and would be registered if not for the Competing Marks Proceeding (See Bagatz 228/65 Fromein & sons ltd vs Pro Pro Biscuits ltd p.d. 19(3) 337 (1965) where Judge Salzmann stated:

A proceeding under Section 17 (now Section 29) is not intended to determine whether a mark is registerable. In such a proceeding the Commissioner works under the assumption that both marks are registerable. At a later stage, after the mark has published and an opposition is filed, this assumption may be lost.

If it is clear that if the Commissioner is not willing to assume registerability of both marks, he will not initiate a Competing Marks procedure under Section 29(a) of the Ordinance. It is only sensible to start a Section 29a proceeding if one can assume that the marks are registerable under Sections 8, 11 and 12, and the following quotation from Frohmein is relevant here:

Where the Commissioner is not willing to assume (that the two marks are otherwise registerable), it is inappropriate to proceed according to Section 17 (i.e. Section 29) and consider which mark takes precedence, since this assumes that both marks would be registerable if not for the competing mark (BAGATZ 228/65 [1] page 341).

Furthermore, Judge Barak added in re Al Din that under a Section 29a proceeding, the Commissioner has the authority to decide that neither mark is registerable before launching the Competing Marks Proceeding since there is no point or value in to conduct a long inter-partes proceeding where neither mark is registerable:

“Nevertheless, there is nothing to prevent the Commissioner to refrain from determining which mark takes precedence under Section 29 if, based on the evidence before him, neither is registerable. (Bagatz 90/70 [3]. For what is the purpose of holding a long and involved proceeding under Section 29 of the Ordinance if at the end it is determined that the party with the greater lack of registerability will not be awarded the mark in his name?”

Indeed, even if a Competing Marks Proceeding IS initiated under Section 29a, there is nothing to stop the Commissioner (and from re AL Din it is indeed fitting for him to) from considering if either mark is registerable. Otherwise the parties can waste time fighting a Competing Marks procedure only for the winning party to later learn that the mark cannot be registered in his name.

The inherently logical approach is to first consider registerability and only then to hold a Competing Marks procedure, as the Supreme Court ruled in Bagatz 296/85 Siya Siyak Nau (Anthony) vs. The Commissioner of Patents and Trademarks. p. d. 40(4) 770 where, in pages 775-776 of the ruling, it is stated that:

The Authority of the Commissioner to consider registerability coexists with the authority to consider which party takes priority. There is no room to consider which mark takes precedence where there is no registration worthy mark. Anyway, the other party will prevail over the applicant for the non-registerable mark.

This problematic nature of the Competing Marks Proceeding was realized by the Commission of Patents and Trademarks in 1167390 and 166845 Danin vs Shidurei Keshet ltd (26 December 2005) where it was ruled that:

It is a matter of case-law that Section 29 proceedings with respect to competing marks do not relate to the registerability of the marks per se, but only with regards to which of the two pending applications should take precedent. See re Frohmein 342, and Bagatz 450/80 p.d. 35, 187 (2) on page 189, Eshel and Sabon shel Paam, is only true with regards to considering registerabily of the  mark from one party, and is noted that the preference of one party over the other is not indicative that the mark is registerable and does not guarantee that it will be registered. However, one is uncomfortable with a situation where a party that wins a competing mark proceeding will eventually have their mark refused, and the party that loses the competing marks proceeding can then reapply and register their mark.

On 23 February 2012 Circular 013/2012 was published. This relates to Competing Marks Proceedings where objections are also raised against the registerability of one or other mark. Under the Circular, the parties to the Competing Marks Proceeding are allowed to file a joint submission to suspend the Competing Marks Proceeding under Section 29a until the substantive objections are addressed.

In subsequent proceedings, as in this instance, the parties do not see eye to eye, as in the Angel case:

As stated in the Circular, the parties have the opportunity to make a joint submission to request substantive examination […] however in this instance, one party’s issued marks are cited against the application of the other party whilst there is a Competing Marks Proceeding under section 29a of the Ordinance. This scenario results in the party whose marks are cited to prefer the substantive objections to be dealt with first. If the Applicant is NOT able to overcome the substantive objection, the Section 29a proceeding is moot, saving the other party the cost and aggravation of the competing marks proceeding and makes it unlikely that the parties will agree on suspension.

Since this Circular was published, there have been a number of Competing Marks Proceedings that were suspended pending rulings on registerability. However, these requests were submitted without agreement of both parties and different rulings ensued, see for example PayPal Inc. vs. Online Ordering ltd, 5 January 2017George Shukha Haifa ltd. vs. Fareed Khalaf Sons Company, 27 November 2016the Angel rulingetc. It has been established that in some cases, one can ignore the joint request requirement and the Commissioner can simply suspend the Competing Marks Proceeding pending consideration of the substantive objections.

In this instance, there are substantive objections against the Swatch mark, however the parties disagree regarding suspending the Competing Marks Proceeding.

Swatch’s “Tick Different” marks are objected to in light of registered Apple marks for “Think Different”, whereas apart from the Competing Marks Proceeding, the new Apple think Different mark is not objected to. One cannot conclude that were there not to be a Competing Marks Proceeding, Swatch’s marks would certainly be registerable.

An issued mark that has been examined, allowed, and published for opposition purposes, is considered stronger than a pending application. For example, the owner of a registered mark is entitled to a monopoly for that mark and this is not the case with a mark that has yet to be allowed. A registered mark can be enforced against infringers, whereas a pending mark cannot, unless it is a well-known mark. Thus it would appear that Apple’s issued Think Different mark should take priority over the pending Swatch mark.

Consequently, the Adjudicator of IP, Ms Yaara Shoshani Caspi rules that it is appropriate to consider whether or not there is a confusing similarity between the two marks BEFORE considering the Competing Marks issue.

Ms Shoshani Caspi notes that she is unhappy with Swatch arguing two contradictory positions. Swatch has submitted copious arguments to the effect that “Tick Different” is not confusingly similar to “Think Different”, but nevertheless, it is appropriate to fight a Competing Marks Procedure which is based on the inherent understanding that there is a confusing similarity and the marks cannot coexist.  Thus Swatch is arguing that classes 9 and 14 (computers and watches) are different classes of goods, but nevertheless a Competing Marks Proceeding is appropriate.

It is fitting to allow Swatch to try to argue that Tick Different in classes 9 and 14 is not confusingly similar to Think Different in class 9 which is already registered. It is right to do this before addressing the Competing Marks Procedure.

This ruling is in accordance with the Angel’s decision where there was also a Section 11(9) objection and the Competing Marks Proceeding was suspended pending resolution of the objections.

Swatch is to respond to the substantive Section 11(9) objections against the two Tick Different applications, within 30 days. If successful, the Competing Marks Proceeding will ensue.

Ruling by Ms Shoshani Caspi re Think Different to Apple vs. Tick Different to Swatch, 28 February 2018