Israel Patent Office operation During Corona Pandemic and until the end of Pesach (Passover)

This is a translation of an Official Notice from the Israel Patent Office.

From the initial corona epidemic outbreak, the ILPO has been functioning under its
regular framework (with majority of its employees working from home).
On March 21st, 2020 the Israeli government approved an Emergency Regulation
(expansion of the agreement of vacation leave for the public sector due to the new
Corona virus) 2020-5780 and the Emergency Regulation (limiting the amount of
employees in the workplace in order to minimize the spread of the new Corona virus)
2020-5780 (page 820, ordinance booklet 8405, 22.3.2020).

As a result of these regulations and according to the decision of the management of the
Ministry of Justice, the ILPO workforce was reduced to approximately half. These
regulations come into force starting today, 22.3.2020. They are to remain in effect, as
of now, until 16.4.2020.

The ILPO would therefore like to clarify its activities until 1.5.2020, or until further
notice, whichever is the later date:

A. Despite the reduction in manpower, most of the services provided by the ILPO
will continue, subject to the details of this announcement. The ILPO will do its
utmost to fulfill the Patent, Trademark and Design commitments of the State of
Israel under the various treaties and agreements of which it is a party to. In
addition, special attention will be given to urgent requests, such as Requests for
accelerated examination. Naturally, the reduction in manpower will lead to a
substantial reduction in the amount of applications examined at the ILPO in the
various fields.

B. There will be no frontal reception hours at the ILPO. All departments have a
call answering service. Inquiries can be made to the various departments of the
ILPO as detailed here

C. The online filing systems are functioning as usual. Documents may be
submitted as usual, either by the online system, by email, or by leaving hard
copies in the appropriate mailbox next to the security guard at the entrance of
the ILPO.

D. Patent, Trademark and Design Certificates will be produced as usual. However,
due to irregularities in the postal system, we recommend printing the certificates
from the ILPO website.

E. The Patent, Trademark and Design journals will be published as usual.

F. The following functions will be suspended until after Passover:

1. Transfers of ownership, name changes or other changes in the register,
   aside from representatives and address change for correspondence.
2. Licensing and qualification exams for Patent Attorneys, excluding
   complaints regarding Patent Attorneys;
3. Notices regarding formal deficiencies in national phase patent
   applications;
4. Daily digest regarding electronic correspondence sent to applicants.

G. To clarify, the ILPO will close for the Passover holiday between 8.4.2020
through 15.4.2020 as it does every year.

Extensions and Deadline Delays

The ILPO is aware that as a result of the extenuating circumstances created by the
Corona epidemic, applicants and their representatives in Israel and abroad are facing
numerous challenges, including communication challenges and working efficiently
from the applicant offices, and as a result applicants may be unable to meet the ILPO
deadlines established by laws and regulations. The ILPO is striving to ease these
challenges faced by the applicants and by their legal representation within the legal and
legislative framework, as follows:

A. An inability to meet the deadlines set by the ILPO resulting from circumstances
relating to the Corona epidemic can likely be considered a “reasonable cause”
and/or “circumstances over which the applicant and his representative had no
control and which could not be prevented” as per Section 164 of The Patents
Law, 5727-1967, and Section 100 of The Designs Law, 5777-2017. Also, said
events can likely be considered to warrant deadline extensions in trademark and
design matters as per Section 82 of The Trademarks Regulations 1940 and
Section 54 of The Designs Regulations, 1925.

B. Applicants who did not meet a deadline set by law or a deadline before the
ILPO, or could not submit a necessary document in time due to the
aforementioned circumstances may file a request for an extension providing
reasons and details of events. Each request will be separately reviewed to
determine whether the conditions for extensions are met (i.e. causal relationship
between the situation and the failure of meeting the statutory time limit), and
will be considered favorably in light of the circumstances. Requests for
extensions can be submitted during the period to take an action or afterwards.

C. In order to allow applicants to submit a request for an extension as described
above, until 1.5.2020 or until another announcement is made, whichever is the
later date, no files will be closed due to failure to answer correspondence from
the ILPO, and notifications before closure will not be sent. In addition,
trademark competition proceedings under section 29 of the Trademark
Ordinance will not be initiated.

D. Limitations set in Commissioner Circular 017/2012 – Trademarks regarding
the maximum period for responding to ILPO correspondence during the
examination period, and Chapter D of Commissioner Circular 035/2017-
Patents will not apply until 1.5.2020 or until another announcement is made,
whichever is the later date. Extensions granted during the period from this announcement until the end of said period will not be counted as extensions according to these circulars.

E. Deadlines for submitting documents before the ILPO tribunal are hereby
suspended until 1.5.2020. The tribunal will remain open as usual, with the
exception of hearings.

F. For avoidance of doubt, there are deadlines set in the legislation which cannot
be extended including those enumerated in articles 18(b)(3) regarding
submitting documents by third party, 30, 56, 57, 61, 64e(e)(2), 64f, 64m, 64o(a),
73(c) and 170(c) (submitting opposition, payment of renewal fees, submitting
requests for Patent Term Extension) in the Patents Law 5727-1967, the deadline
for submitting a trademark opposition according to article 24 of the Trade
Marks Ordinance (New Version), 5732-1972, the deadline for submitting a
renewal fee and for submitting a request to reinstate a trademark according to
article 33 of the ordinance, requests to reinstate a design, to pay design renewal
fees and requests to reconsider a design rejection, according to articles 40, 41,
43 and 30 of the Designs Law, 5777-2017.

All applicants and legal representatives, please note these fixed deadlines.

G. At this stage, the ILPO cannot waive fee payments or extend the deadlines for
payment of fees as set by the laws and regulations regarding such fees, due to
lack of legislative authority to do so and to the need to alter the ILPO computer
systems to act without receiving prior payment. If any changes on this matter
occur in the future, the ILPO will announce it accordingly.

 

Israel Minister of Health grants Compulsory License to Import Patent Infringing Medicine to treat Corona virus

Section 104 of the Israel Patent Law states:

The Minister may permit the exploitation of an invention by Government departments or by an enterprise or agency of the State, whether a patent for it has or has not already been granted or has or has not already been applied for, if he finds that that is necessary in the interests of the National security or of the maintenance of essential supplies and services.

There are corresponding laws in other jurisdictions.

Israel has never invoked this law, but is planning to import a generic version of Kaletra to treat COVID-19.

Abbvie developed this drug for treating HIV, but it has shown somewhat unequivocal results in treating COVID-19 and we note that double blind tests of the drug on Corona sufferers in China were less than convincing.

That as may be, the drug remains patent protected in Israel until 2024, but has lapsed in other countries including India, which has developed generic versions.

In view of the pandemic, the Legal Advisor to the Government has authorized the Health Minister Litzman to import the generic version from India as Abbvie cannot provide sufficient quantities.

Section 104 has been around since the Israel Patent Law was passed in 1967, and over the past half century has never been used. The current health situation which has resulted in a national ban against congregating that has put the entire population under the equivalent of house arrest with the number of reported sufferers from the disease increasing exponentially is unprecedented. Thus the current situation seems to justify this extraordinary step.

However, to minimize the damage to Abbvie, the  generic version will only be used to treat CORONA and not HIV.

Furthermore, it will be noted that Section 108 of the Law states that:

If a permit was granted under sections 104 or 105, then the State Treasury shall pay to the owner of the invention, to the patent holder or to the holder of an exclusive license, as the case may be, royalties set by agreement between the parties or – in the absence of agreement – set by the compensation and royalties committee.

In other words,  Abbvie will eventually be compensated.

We hope and pray that this or some other drug is successful in treating this illness and our thoughts go out to the sufferers.

Best Practices in Intellectual Property Conference Postponed

Unfortunately due to the Corona virus preventing both international travel to Israel and prohibitions against congregating, the highly regarded Best Practices in Intellectual Property Conference scheduled for March 23rd & 24th, 2020 has bee postponed.

The conference will take place on June 23, 2020 assuming things are back to normal, or will be rescheduled for the autumn.

The Israel Patent Office is, however, open, and there have been no announcements that deadlines are being extended. However, there is no reception of the public, and there are no face-to-face meetings with Examiners. Nevertheless, the Examiners are available for phone interviews.

Patents vs. Antitrust Laws

It is often overlooked that patents create the kind of monopoly of the type that anti-trust laws are there to protect the public from.

Sometimes this results in compulsory licensing, or non-discriminatory licensing agreements.

The 2020 Best Practices in Intellectual Property conference organized by Kim Lindy of Intellectual Property Resources, and held at the Sheraton Hotel, Tel Aviv, is hosting both the Director of the USPTO and the Assistant Attorney General of the US Justice Department as keynote speakers.

This will provide the Israeli audience and the increasing numbers of overseas practitioners that fly in specially, with a more balanced perspective of how the US sees the public interest. To register click here.

 

 

CarBay – Cal Auto free-riding on ebay’s Reputation?

Cal Auto Financing 1998 ltd provides car leasing and rental services.

The firm applied for a trademark for CARBAY. Their CarBay logo is shown alongside. The trademark is, however, for the word mark and covers providing business and marketing data via a website, providing consumer data regarding products and services via an Internet site, advertising on the Internet, business management, marketing communications, advertising vehicles for sale over the internet, selling vehicles over the internet and towing vehicles, all such services being computerized or Internet enabled.

Ebay, which has trademarked the word mark EBAY and stylized logos as shown opposed the registration.

Ebay owns a sales site ebay that is used by traders to display their wares. The usage of the site is enormous, and EBay claimed that due to this, their mark is to be considered as a well-known mark under the law, and both Israeli and international courts have accepted this to be the case. Their marks are registered in dozens of jurisdictions including Israel.

Ebay claims that the CARBAY mark lacks distinctiveness and, due to the similarity with Ebay’s mark, there is a likelihood of deceiving customers, that the service is provided by Ebay.

Ebay also accused Cal Auto of bad-faith and of attempting to free-ride on their reputation, noting that Cal Auto has a logo of their own that has a reputation, but that they decided not to use it, and Cal Auto’s name or logo does not appear on their website. Consequently Ebay also alleges that the mark should not be registered as it creates unfair competition.

Cal Auto provides leasing services and has branches across Israel, and also offers its services via the Internet site under the same name. They also operate a sales website under the requested name that offers leasing, sales and rental services and offers car accessories for sale.

Cal Auto argues that the term BAY is generic and is used in a plethora of trademarks owned by various entities, and Ebay’s mark is distinguished by the E which is very different from CAR,  so the marks are very different. They also submitted a rather more creative argument, that since eBay is a platform for vendors and they don’t themselves sell goods, and since goods sold via the site do not carry the eBay logo, the mark is not well-known for the goods that Cal Auto offers. Thus since Ebay does not sell cars or indeed, anything else, but is simply a platform for third parties to offer their goods, and even were cars to be offered for sale on eBay they could not practically be sold in Israel due to the bureaucracy, there is, in practice, no competition between the parties.

To narrow the disagreement, Cal Auto narrowed the list of services and goods to Advertising vehicles for sale via the Internet, and providing information over the Internet regarding sales of vehicles, and vehicle sales over the Internet.

The Commisioner applied the “triple test” as ruled in 9191/03 V&S Spirit Aktiebolag vs. Absolut Shoes ltd, and considered that the dominant element of both marks was the word BAAY since for selling cars, the prefix ‘car’ in Carbay is a generic descriptor, and the ‘e’ of ebay simply implies electronic.

The word bay implies “a part of the coast where the land curves in so that the sea is surrounded by land on three sides“. This word does not mean anything specific with respect to the goods and is not laudatory, so there is no reason why it should remain available to anyone to use. Despite the Applicant’s allegation that the word bay is a part of a number of marks, the word bay has not lost its distinctive character. It does not help that most of the marks cited by the Applicant are registered elsewhere, and the Commissioner accepted ebay’s argument that they were acting against those marks as well.

The Commissioner accepted that ebay was a well known mark and citing Kerly that “The more distinctive the earlier mark, the greater will be the likelihood of confusion”.

The Commissioner considered this to be particularly the case where the dominant element is the common one.

In this regard, by noted that in practice, the word CARBAY was stylized as  and ebay as , and, again citing Kerly, considered the usage of the san serif font with each letter in a different colour as increasing the similarity and the likelihood of confusion, and concluded that the marks look similar, despite not being identical.

In Hebrew, the stress is on the end of words, so ebay and carbay sound similar.

The Commissioner accepts that there is a difference between actually selling goods and providing a platform on which goods are sold, but the ebay mark covers vehicles, and the customers are the same, and the customers may not be aware or interested in the business model behind a website, and simply view both as sites selling vehicles, increasing the likelihood of confusion.

Citing the Einan bread ruling, the Commissioner also accepted ebay’s contention that Cal Auto’s choice of CarBay was not accidental, and was intended to ride on ebay’s reputation.

The Commissioner also ruled that consumers may see a link between the sites, and that this was significant enough to prevent coexistence.

Car Bay’s registration in class 35 was refused.

Opposition by Ebay against Israel trademark No.283359 to CarBay, ruling by Ofir Alon, 29 January 2019.

COMMENT

So the trademark has been canceled and Ebay received costs of 35000 NIS. this is not a lot of money for Cal Auto where cars are sold are bought. Meanwhile, business goes on at CarBay’s website, which is at a carbay domain and still features the logo. So business goes on.

A Patent for a Lotto Game

Alexander Stern of Netanya filed and prosecuted Israel Patent Application No. IL 196915 titled “Lotto Game”. He wasn’t professionally represented.

The basis of the invention was that cards can be individual cards, part of a suite, or part of a set of cards having the same number. When drawing the 52 cards from a pack, they can fall into any of the above variations, and these can be betted on.

The main claim is:

A method for playing lotto game based on use of a particular feature of playing cards, such that each single card is a combination of a value of card and a suit, said method comprises:
– betting on single cards, cards of a particular suit, cards of a particular value, suits, values of cards, combinations, variations and permutations thereof, and variations with repetitions and combinations with repetitions of suits and values of cards according to selected by a player bet amount and chances to win;
– picking out all cards at random one by one from a standard deck of 52 playing cards, which brings about creation of random sequences of cards of different types and random sequences of suits and values of cards, wherein each card picked out at random takes part in the creation of said random sequences fulfilling several functions at the same time: as a single card, as a value of card of a particular suit and as a suit of card of a particular value;
– said random sequences forming results of the game are permutations of said cards, suits and values of cards, containing variations and combinations of different numbers of said cards, suits and values of cards and also variations with repetitions and combinations with repetitions of said suits and values of cards;
– writing down said random sequences in a course of the game separately from each other, including ordinal numbers of said cards, suits and values of cards in these random sequences respectively;
– comparing results of the game with bets made by each player and determining whether a successful bet has occurred, and in the affirmative case, calculating a winning amount which is granted to a player according to the probability of success of his bet.

In essence, a bet is placed, the cards are drawn randomly and will feature lone cards, sets of identical numbers and runs of the same suite. These are recorded and compared with the bet, and a prize is awarded based on the probability of the betted result being realized.

Mifal Hapayis, the National Lottery, opposed the patent issuing, claiming that the invention was too general and was merely a way of playing a game that could be performed with pen and paper, and was thus not a technical invention as required for patents under Section 3 of the Law.

The Applicant countered that it was inefficient to run this game without a computer, and using pen and paper would lead to many errors. In this regard, he referred to the guidelines for computer inventions, and argued that the invention was more than a computer program per se.

Commissioner Alon noted that Section 3 allowed inventions in any technological field, and interpreted that to mean that patentable inventions had to be in ‘technological’. He went on to note that the independent claim did not actually require a computer, and that the invention could be performed by hand on paper, as the Applicant admitted during the hearing.

The guidelines for patentability states that:

Discoveries, scientific theories, mathematical equations, instructions for playing games and computer processes per se should be considered as abstract ideas, or processes lacking a technical nature, whether if performed by hand, or on a computer. Furthermore, economic business methods  are not considered as technical inventions as ruled in re IL 131733 to Eli Tamir, ruling of 21 September 2006.

Thus the Work Guidelines that the Applicant wished to rely on state that computerization of an invention that can be performed by hand is only patentable if the use of a computer provides more than merely improving the efficiency by automation.

The improvements that the Applicant noted by computerizing the process simplify the recording, remove mistakes and improve accuracy. These are natural results of computerization and so the Commissioner ruled that the patent lacks the technological requirement of the Law as currently written, and this would be the case were a computer explicitly required in the main claim.

There are dependent claims that do recite a computer, but without any explanation regarding why this achieves more than merely improving efficiency, the Commissioner did not consider that this provided a technical nature to the invention. Furthermore, the Applicant could not point to any dependent claim that provided a technological feature.

Consequently, the Opposition was accepted and the patent was rejected.

Since the Opposition proceeding was conducted efficiently in a focused manner that did not require cross-examination of witnesses, only relatively low costs of 4000 Shekels were awarded.

Opposition to IL 196915 “Lotto game” to Stern, opposed by Mifal HaPayis, ruling by Ofir Alon, 28 January 2020.

COMMENT

What computers contribute to gambling games Is that people can play remotely. They do not need to be in the same room. It is for this reason that Mifal HaPayis, the National Lottery which is a government gambling monopoly, opposes such patents.

Bumbags and Fanny packs

Marom F.G.P. ltd filed an industrial design application in Israel for a pouch of the type typically referred to as the bumbag or fanny pack.

The product was photographed from all angles and is shown here.

The Examiner rejected the application claiming that it was not new and did not have a distinctive feature as required by Section 3 of the Israel Design Law 2017.

The prior art cited included a product advertised on Ali Express and one advertised on Facebook.

The Applicant responded that the Internet publications were not clearly dated and so were not to be considered as Internet publications viewable in Israel as per Commissioner Circular MN 69 from 2008.

The Applicant went on to note that there were many differences between the cited products and the applied for design, including the connection of the strap to the pouch, the ring, the zip fastener type and a rear compartment and its position, the size of the teeth of the zip fastener and the Zip pulls, the ability to attach the pouch with other connectors such as straps, and whether sold with a strap or not, the seams and their style and the spacing above the seam. The differences were tabulated, comparing the requested design against that advertized on Ali Express, and against the design from Facebook.

The Examiner rejected the Applicant’s claims and noted that the products shown in Ali Express could be dated by response posts and that the date of the Facebook posting is objectively set by Facebook and is not under the control of the person making the post. In support of his position, the Examiner supported his position with a 2016 decision by former Commissioner Asa Kling concerning shoe designs filed by Naalei Nayot (1974) ltd.

The Examiner considered that the differences were minor and that the general appearance of the applied for product design was similar to those cited against it.

In a hearing before the Commissioner, the Applicant argued that bumbag designs are a crowded field, and so more weight should be given to the minor differences. In this regard, the fact that the Examiner could find so many black bumbags supports providing protection for those having minor design features. Furthermore, in the fashion industry it is the minor differences that are all-important, and one should consider the ‘informed user’ and not the ‘normal consumer’. The Applicant argued that the  ‘informed user would be aware of and influenced by the little details.

The Applicant considered that the large rings for attaching a strap and the slot were all important in the fashion industry. He also argued that Ali Express and Facebook were subject to manipulation of responses and that products were not shown in high quality images from all angles.

Status of Internet Publications

The Commissioner rejected claims that images on Ali Express and Facebook could not be considered prior art, and noted that the Guidelines for Examiners from March 2019 specifically allowed citation of such images based on the Nayot ruling.

Design Law – Novelty and Distinctiveness

The Commissioner noted that whereas the old Design Ordinance required novelty or distinctiveness, Section 3 of the Design Law 2017 requires both.

Russell-Clarke and Howe On Industrial designs, 9^th Ed. (2016) argue that the combination (as required in Europe) raises the bar above the requirement for novelty alone.

Section 6 of the Israel Design Law defines novelty:

A design will be considered new if an identical or similar product, differing only in irrelevant details, was not publically exhibited in Israel or abroad before the relevant date,

Originality is considered by reference to a single document or design and not by considering documents showing different elements; Hasselblatt Community Design Regulation (EC) No 6/2002 (2015) p. 102.

The requirement for Novelty under the design law, is similar to that under the Patent Law in that it is an objective test, and looks at whether the applied for design is identical to an earlier published design, or differs therefrom in minor details only, where labels and the like are not considered part of the design, see EUROPEAN UNION DESIGN LAW, A Practitioners Guide, 1^st Ed., 2012, Paragraphs 10.10-10.29.

Similar to Section 4 of the Israel design, and the inspiration thereof, is DIRECTIVE 98/71/EC OF THE EUROPEAN PARLIAMENT AND OF THE COUNCIL of 13 October 1998 on the legal protection of designs, which does not specify the ‘informed’ or the normal consumer:

“A design shall be considered new if no identical design has been made available to the public before the date of filing of the application for registration or, if priority is claimed, the date of priority. Designs shall be deemed to be identical if their features differ only in immaterial details.”

The ‘immaterial details’ should be interpreted narrowly so that novelty remains a technical requirement. In general, the outline, colour, shape, decoration, texture and material used are not considered irrelevant (Hasselblatt page 77).

The European Design law does relate to the informed user. However the Israel Commissioner disagrees as there is nothing in the wording of the law to support this distinction, and considers that novelty should be a simple test that is as objective as possible.

The basic assumption is that novelty should be considered before considering the distinctiveness which does require consideration of the informed user, and is more complicated.

The Distinctiveness Requirement

The distinctiveness requirement is defined in Section 7(a) of the Law:

A design will be considered as distinctive if the general impression that it gives to a informed user is different to that provided by a different design that was previously published, and in this regard, designs for all types of products may be considered.

The distinctiveness considers the general impression and not the differences. See Russel-Clarke page 43 2-048:

“The requirement of “individual character” focuses more on overall impression rather than on details. Thus, detailed differences will not be enough to give validity to a new design if it produces the same overall impression as an earlier design.”

The informed user is defined in Section 1 as follows:

The informed user is a person who is interested in the design, wanting to use it, and is familiar with the range of competing designs for the same type of product.

The explanations accompanying the draft (2015) of the new law page 703 states::

The test of the distinctiveness of a design is a necessary condition for its eligibility to be registered or to be protected as a non-registered design, and is based on the informed user. The rights relating to both registered and non-registered designs are partially based on this test. The informed user is someone who is interested in a design and in competing products for his own use or to purchase, but he is no expert, he is not a technician or an industrial designer., but is not indifferent to the product or ignorant of it. Someone off the street that has no interest is not an’ informed user’… this is an objective test, that relates to the general impression that a product makes on a person that satisfies these conditions.

The UK Court of Appeals explained this in more detail in Samsung vs. Apple [2012] EWCA Civ 1339:

The notional character whose attributes the court has to adopt is the “informed user.” The Judge dealt with these attributes:

[33] The designs are assessed from the perspective of the informed user. The identity and attributes of the informed user have been discussed by the Court of Justice of the European Union in PepsiCo v Grupo Promer (C-281/10P) [2012] FSR 5 at paragraphs 53 to 59 and also in Grupo Promer v OHIM [2010] ECDR 7, (in the General Court from which PepsiCo was an appeal) and in Shenzhen Taiden v OHIM, case T-153/08, 22 June 2010, BAILII: [2010] EUECJ T-153/08

[34] Samsung submitted that the following summary characterises the informed user. I accept it and have added cross-references to the cases mentioned:

He (or she) is a user of the product in which the design is intended to be incorporated, not a designer, technical expert, manufacturer or seller (PepsiCo paragraph 54 referring to Grupo Promer paragraph 62; Shenzen paragraph 46). However, unlike the average consumer of trade mark law, he is particularly observant (PepsiCo paragraph 53);

He has knowledge of the design corpus and of the design features normally included in the designs existing in the sector concerned (PepsiCo paragraph 59 and also paragraph 54 referring to Grupo Promer paragraph 62);

He is interested in the products concerned and shows a relatively high degree of attention when he uses them (PepsiCo paragraph 59);

He conducts a direct comparison of the designs in issue unless there are specific circumstances or the devices have certain characteristics which make it impractical or uncommon to do so (PepsiCoparagraph 55).

[35] I would add that the informed user neither (a) merely perceives the designs as a whole and does not analyse details, nor (b) observes in detail minimal differences which may exist (PepsiCo paragraph 59).”

The range of Options for Designs in the Field

Section 7(b) of the Law requires that when considering the general impression of the informed user, one should consider the various options for designing products in the relevant field. The Section of the law states that:

In addition to that stated in part (a), the determination of whether the design creates a different general impression to the informed user requires consideration, inter alia, of the range of possibilities for goods in the field that the product design relates to.

It is noted that the fact that a specific field has a lot of designs or even a very large number, does not necessarily indicate that the range of possibilities for designing the product is limited.

The freedom of design is limited where there is a limitation on the designer that prevents the design of products in the relevant field. This limitation includes  the use of the product and its functionality, the way it is used, standards that oblige a specific form, and the like. See Russell-Clarke, paragraph 2-055.

With this, the case-law finds that where there are a large number of designs in a particular field, this does influence the informed user who will give more consideration to the differences between the designs, and this lowers the bar for distinctiveness . T-83/11 and T-84/11, Antrax IT Srl v OHIM, General Court of the European Union, 13 November 2012:

“The finding that the designer’s freedom was not restricted by technical or statutory constraints in no way dealt with the question whether, de facto, there was a ‘saturation of the state of the art’ by reason of the existence of other designs for thermosiphons or radiators which have the same overall features as the designs at issue, a saturation of the state of the art which could be capable of making the informed user more attentive to the differences in the internal proportions of those different designs.”

Thus where there is a crowded field, the result is likely to be similar to a determination that the designer has limited freedom. A discussion on the difference between a lack of design freedom and a crowded field may be found in Kurr, Levin, Schovsbo The EU Design Approach: A Global Appraisal, (UK, USA 2018) pages 183-185.

In summary, when determining that a design has a distinctive feature, one should contemplate the following considerations: What field is the design applied to? What characterizes the informed  user and how well does he know the field, and is the field a crowded one, can he make direct comparisons, and how much freedom does the designer have to develop the design?

From the general to the particular

Does the design answer the novelty requirement?

The Commissioner now compares the requested design with those cited by the Examiner.

Compared to the designs showed on Ali Express, the requested design is novel because of the rear zipper which is not shown in the cited designs, and because a detachable strap is not shown in the cited art. These are significant design features.

As to the Facebook advert, the difference that the Applicant noted are the slot in the part connecting the pouch to the ring (where the large round ring is threaded), the shape of the ring (round rather than elliptical), the stitch type, and the zip type. The Commissioenr accepts that these features provide novelty. It is stressed that the lack of the strap in the Application is irrelevant to novelty, since the product shown on Facebook has a detachable strap.

Is the design distinctive?

When considering whether the design has a unique character, the following considerations should be contemplated: the field in which the design is applied, is it crowded, the characteristics of the informed user, the degree of familiarity he will have with the field, the amount of attention he will apply in the field, and the question of whether he will make direct comparisons and the degree of design freedom,

In this instance, the field is fashion, and the product is a pouch. The informed user is a fashion lover who will be familiar with the bags of the type in question and will be attentive to details, there is nothing preventing him making a direct comparison between bags. The informed user will concentrate on bags and pay attention to details.

The Applicant herself notes that some of the features are not unique and were designed prior to the Application being filed (such as the zip and or the rings holding the strap), however in her opinion, the combination of elements creates a distinctiveness of the product.

The Applicant claims that there is limited design freedom in the field, and that one has to consider the limited design options for bags in general and pouches in particular. The Applicant produced the results of an internet search for black pouches to show that the field was crowded, explaining that these results show the large number of designs in the field . She herself admitted that the crowdedness of a field was a factual determination but did not provide evidence for her assertion.

The Commissioner does not consider that in this instance there are any limitations on bag design that are based on external considerations and that there is virtually unlimited design freedom. Although the Applicant produced a number of designs but did not provide evidence of when they were posted and so the Commissioner cannot determine the crowdedness of the field at the time in question. One can even learn from the evidence submitted that there are a range of pouch designs in the style in question. Thus the commissioner did not find that there was a limitation on design freedom in this instance, or that the informed user would be more attentive to details.

The common features between the applied for design and that posted on Facebook are the general form of the bag, the material used (leather zip, fake leather pouch), the shape of the zip, its position, the zip pulls, the position of the stitching, that add to the design, and the position of the strap.(whether provided or retrofittable), the tongues for attaching the straps to the bag, and their shape, and the metal rings for attaching the bag to the strap.

However comparison of a design with the prior art should be made from all angles. The Office Action shows that the reverse side of the bag featured on Facebook was not cited by the Examiner, and it is not before the Commissioner, and so there is no indication that the rear is similar. An Internet search shows the rear of the pouch cited on Facebook and shows that it is flat, unlike the cited picture which has a zip. Furthermore, the front has two folded over seams which contribute to the appearance of the bag.

The Commissioner believes that, as shown in the pictures, the infirmed user will consider the requested design as different from that shown on Facebook and due to the lower fold, the zip and the seam along the edge of the bag.

As to the Ali Express publication, the Commissioner came to a similar conclusion. The informed user will consider the applied for design is distinctive due to the ring connection between the pouch and the strap in the applied for design which is distinctive and different to the Ali Express designs where the strap is fixed to the pouch. As the product is to be worn on the waist with a belt, the belt has significance and the appearance is distinctive and different from designs with a fixed strap.

Consequently, the applied for design no. 63572 is allowed.

COMMENT

The zip on the back and the concealed pocket are not aesthetic features but rather functional features, as these are not seen when the product is worn. Nevertheless, this ruling provides guidance on the threshold for novelty and distinctiveness required for registering designs in Israel.

Bee Creative, but register your trademark or you may lose it

Maisa Sosha filed an Israel trademark application on 1/2/2018 for Bee Creative with a stylized bee, for graphic design services, #branding and #socialmedia & #advertising services in Class 42, requesting immediate examination. The mark was allowed the same day and published for opposition purposes.

Ms Revital Gabai Siboni filed an Israel trademark application later that month for similar services in classes 35 and 42, with the same name and a different bee design. She opposed Sosha’s mark, arguing that she’d used her mark for 3 years, claiming it was well known.  However Siboni’s mark was not a well known mark under the Israel Trademark Law. She could not prove that Sosha had filed in bad-faith. That Siboni had registered domain names for Bee Creative and was using her logo first did not matter.

The Deputy Commissioner accepted that Siboni was a professional, and expressed her sorrow that she had not registered her trademark when she started to use it. However, she rejected the Opposition, upheld Sosha’s mark and refused Siboni’s application, charging her costs of 8000 Shekels.

The moral of the story is to register your name and logo as trademarks as soon as you start using them.

Patent Searching

I have just participated in a 10 hour course on patent searching that was sponsored by Kim Lindy’s Intellectual Property Resources (IPR), and was given by Arad Ophir Ltd, Israel’s leading data resource company, that was established 25 years ago, and which provides search and information services to patent firms, universities and  tech transfer companies, industrial players, and so on.

The course was held in Machon Mofet at Michlelet Lewinsky, which is near the Glilot junction between Tel Aviv and Herzliya. The place is accessible and has plenty of free parking. The classroom used had computers, which allowed the participants to gain experience in using the various tools and databases.

The course was intended by a mixture of researchers, in-house patent portfolio managers, employees of university tech transfer offices and patent attorneys.

This was the first course of its kind that Arad Ophir was offering to the public, although apparently the lecturers had presented various seminars and courses as part of university courses, within companies, and so on.

There were sessions on various aspects of the patenting process, and on the difference between Patentability and Freedom to Operate, and between the required searches, with other searches such as landscape searches and searching for art to invalidate a patent that a third party is trying to enforce against the client.

Participants were shown the free databases such as Espacenet, Google patent, and the value added features of commercial databases with charged usage, such as Lexis Nexis and others that offer Derwent titles and abstracting, and also provide coverage of patents from smaller patent offices.

In general, the commercial databases provide better display tools, and are helpful at providing graphical displays such as pie chart and graphs for summarizing the data. In addition to patent and scientific databases, we were also shown business databases that aggregated information from press-releases, newspaper articles, public tenders, and the like, showing what information about products, market sectors and companies was readily available to investors and how it could be easily accessed.

Participants were able to play around in the various databases, including STN – the Science and Technology collection of databases that has unequaled science and technology coverage, Nexis, which is a place to review patents and products, and Nexis Dossier which is more focused on intelligence about companies.

To get everyone on the same page, the course started with Arad Ophir employee Dr Ayelet Opharim giving an overview of patenting and patent prosecution. This was a mistake as though no doubt competent in search services and navigating the various databases, she was less familiar with various aspects of the patent process. For example, Dr Opharim presented a time-line of patent prosecution in Israel, and explained that the process commences with the issuance of a Notice Prior to Examination. So far so good. However, she have the impression that the Israel Patent Office may ask for various documents, whereas in practice the Notice is a standard letter that is identical for all applicants. True, it has changed a little over time, so now one only needs to submit a list of citations and copies of non-patent literature which can be uploaded online, whereas in the past, a CDROM with the citations was required to be submitted.

The lecturer went on to discuss ways of accelerating examination, but unfortunately got muddled up between requesting allowance under Section 17c and the PPH.  Section 17c is a statutory provision under which applicants can generally avoid substantive examination by conforming the claims to those of a corresponding patent issued by a recognized examining patent office (such as the USPTO, EPO, UKPTO,  etc) and requesting allowance, whereas the PPH or Patent Prosecution Highway is a multinational agreement between patent examining offices under which, once a patent is allowed in one jurisdiction, applicants can supply a chart showing how the pending claims map onto those allowed to a corresponding jurisdiction, and the corresponding jurisdiction Is supposed to commence examining the pending patent, using the work already done by examiners elsewhere as a starting point.

The word embodiment came up, which means “the representation or expression of something in a tangible or visible form” and is used in patents to refer to an example of system or method that utilizes an aspect of the invention. Here again, the lecturer gave a wrong and misleading definition.

Veteran Patent Attorney Einav Zilber and I corrected the various errors, but it was uncomfortable though necessary to intervene, and I think it would have made more sense to have had a patent attorney making the introductory lecture.

Einav Zilber then gave a talk about how to read patent documents, and which parts were important for which purpose, and how different people in a company needed different summarizes and different guidance. Thus a CEO or other senior person in a discussion of Freedom to Operate or infringement should be kept focused on the claims and the jurisdictional coverage of a patent family, whereas someone in R&D helping with overcoming an Office Action (a rejection of a patent application by an Examiner at a Patent Office) based on a cited patent or application, should be kept focused on what the citation teaches, and not on whether a patent issued, the scope of the claims and whether it is in force. As would be expected, the patent attorneys were on familiar ground, but researchers and even in house patent managers seemed to find the explanations helpful and useful. Some of the talk was based on an a presentation given to the public as part of an AIPPI conference in Israel, and it was rather flattering to see myself credited on the slides, as part of the team of Israel Patent Attorneys that were involved in their preparation.

There was a valuable session on searching for chemicals or specific molecules, and the importance of using synonyms and CAS registration numbers. The coverage of Chemical Abstracts and Medline was discussed.

Perhaps not surprisingly, the lecturers from Arad Ophir reported that some patent attorneys discourage their clients from searching and could not understand why. As search professionals it is clear that it is in their interest for all potential clients to order searches. Indeed, their position was that clients should search before embarking on a course of action, use alerts to track developments, and to periodically search for freedom to operate and other purposes.

On my way home from the first day, I took a call from a referral regarding an App he was thinking of developing in the framework of a Startup company. He was keen on searching to make sure that he wouldn’t run into legal problems. I explained that if he explained the idea to me, I could do a patentability search or a landscape search directed to finding out about competing products, but it was too early to look into Freedom to Operate since until he knew how the product was supposed to work and where it would be sold, it was too early to analyze what problems could be encountered. It seemed reasonable to note that it was a perfectly reasonable business plan to deal with accusations of infringement if and when they came up, by a work-around, by purchasing a license, or even by closing the company. In his case, it was more than likely that any infringement would not be of a direct competitor’s product, and licensing would be an option.

A client who is thinking of developing a product can benefit from a landscape search. However, a client who has already developed a product and is intending on marketing, should be made aware of the pitfalls, but it is not unreasonable to file an application so that the product may be launched as patent-pending. If there are enough features to create a claims structure with fall-back positions, it is not unlikely that a patent will issue, and it may be reasonable to let the examiners do their job and to relate to prior art cited when it is cited. As with many things, it is a question of budget. In some cases, the client needs a patent application for fund-raising purposes. Sometimes the client decides to file a PCT application as a first filing and to obtain an International Search Report. This is an option that may be cost-effective, with the quality of the search being not very different from that of a basic patentability search conducted by a data searches, and considered more authoritative and neutral by investors. Also it is important to note that awareness of a commercial entity of a patent that their product infringes can create triple damage liability.

Earlier today I met a new client who has developed a prototype a product that is the result of much thought. There is nothing clearly inventive, but it appears to be in the client’s interest to file a patent application as well as to register designs for the product, as they are aware of competitors that will copy their product. There is a business logic in being ‘patent pending’, even if no patent eventually issues. Where there are aspects of the product that are novel, it may make commercial sense to file a patent application even if the likelihood of a patent eventually issuing is not high. It is for reasons such as this, that patent attorneys do not always recommend searching.

Freedom to Operate searches are important for clients in fields that are competitive and widely litigated. Not all applicants are in that position. Whilst having a patent for a product is no guarantee that the product does not infringe a patent of a third party, it is worth noting that juries, and indeed judges that are not IP specialists are impressed with the spurious argument that the accused has developed and marketed a product that was itself granted a patent.  I once wrote a patent application for a client who felt that it had the financial resources to win if challenged for infringement, regardless of the legal merits of their case, and was not interested in searching. This is a different perspective and may not be the most honorable, but makes business sense to some clients in certain scenarios.

We note that Arad-Ophir correctly has a policy of not opining regarding the relevance of their findings to issues of patentability and Freedom to Operate, and advises consulting with a patent attorney. Some companies offering patentability searches are less careful, but the devil is in the detail. It is worth noting that in Israel it is illegal for anyone other than patent attorneys or attorneys at law to give legal advice on patent issues. Data experts can certainly search and may be more cost-effective or even better at searching than patent attorneys, but a patent attorney should be consulted to discuss the relevance of the findings.

Budget allowing, it makes sense to combine the data searching capabilities of data experts with the knowledge and skill of the patent attorney. However, this can be expensive as one is paying the fees of two professionals. That said, one of the in-house patent managers from industry pointed out that having to abandon a branch of the business after significant investment in something that infringes patents of a direct competitor can be very expensive indeed.

Rina Arad gave a thought provoking talk about how artificial intelligence (AI) is being tested by patent offices to find prior art without, or at least with less human input by patent examiners. It was based on a talk by an Israel Patent Examiner who was credited. This gave an additional perspective and was forwarding looking. I had, however, heard the lecture from the patent examiner when it was first given. I first learned to navigate STN as a trainee patent attorney at Luzzatto et Luzzatto some 20 years ago, when Rina Arad and her partner gave the course themselves. It was nice to see how the Arad-Ophir has grown, and how the database access has developed.

I think that there is a need for patent search courses like this. This was the first time Arad – Ophir was offering such a course, and I am sure they will rethink the content and emphasis. It is possible that separate courses should be run for patent attorneys, for researchers and for in-house counsel, but for this to be possible, it will need sufficient numbers of each group to sign up for dedicated courses.

The end of petty patents in Australia?

In 2001 Australia introduced an Innovation Patent. This required novelty and an innovative step, rather than an inventive step, issued after a month without examination and was valid for 8 years.

If requested to do so and if a fee was paid, the patent could be examined, thereby providing an enforceable right.

Thus the innovation patent is a kind of petty patent.

The Intellectual Property Laws Amendment (Productivity Commission Response Part 2 and Other Measures) Bill 2019 has now been passed by both houses of Australia’s Federal Parliament.

The amendment will abolish the innovation patent system in mid 2021. It does not have retroactive effect and existing rights will not be affected.